Brexit and IP – what next?

Published on
3 min read

After the UK general election, we expect the UK to leave the EU at 11pm UK time on 31 January having ratified the Withdrawal Agreement. This means that the risk of a “no deal” Brexit has now effectively been removed.

With effect from 31 January, the UK will enter into a transition period until at least 31 December 2020.  During the transition period, EU law will continue to apply to the UK. Therefore, so far as the protection of EU intellectual property rights is concerned, it will be as though the UK had not left the EU.

The Withdrawal Agreement makes specific provision for the continued protection of EU trade marks and designs in the UK after the expiry of the transition period, in the following way:  

EU trade marks

A proprietor of an EU trade mark registered before the end of the transition period will automatically gain a corresponding registered UK trade mark free of charge and without any application procedure.  These UK trade marks will have the same renewal and filing dates as the corresponding EU trade mark.

A pending EU trade mark application will not automatically trigger a corresponding UK application at the end of the transition period. Applicants will have 9 months to file a new UK trade mark application (by 30 September 2021) claiming the filing date of the EU application.

To avoid the need for a duplicate UK filing, we recommend filing new EU trade mark applications no later than July 2020. This should allow the applications to proceed to registration assuming there are no examiner objections or third party oppositions.

Registered Community designs

A proprietor of a Community design registered (and published) before the end of the transition period will automatically gain a corresponding registered UK design for the same remaining period of protection.  This will be done free of charge and without any application procedure. These new registered UK designs will have the same renewal and filing dates as the corresponding registered Community design.

A pending application for a Community design (or an unpublished registered design) will not automatically trigger a corresponding UK application. Applicants will have 9 months to file a new UK design application (by 30 September 2021) claiming the filing date of the EU application.

To avoid the need for a duplicate filing, we recommend filing new applications for Community designs as soon as possible and no later than the end of October 2020 (to allow sufficient time for the application to be published) and publishing registered Community designs whose publication has been deferred, before the end of the transition period.

International registrations

The UK will introduce new UK trade mark rights and designs corresponding to international trade marks and design registrations protected in the EU before the end of the transition period.

Pending applications for international trade marks and designs designating the EU will be treated in much the same way as EU trade mark applications and Community design applications (discussed above).

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