How will your intellectual property rights be protected after Brexit?

17 February 2020

How your intellectual property rights will be protected after Brexit?

17 February 2020

After several years of uncertainty, the United Kingdom has finally left the EU on February 1st 2020. Many aspects still remain to be determined which will be object of negotiation until the disengagement becomes effective and total. The European Union is pessimistic about the possibility that the parties have reached agreements on all the still pending aspects before December 31st of this year, although the government of the United Kingdom has expressed its intention of not extending the transitory period that will end on December 31st 2020. Meanwhile, and pursuant to the Withdrawal Agreement of the United Kingdom, it has been stated that the Union Right will continue being applicable in the United Kingdom during said transitory period.

During this transitory period between 1.2.2020 and 31.12.2020, the Regulations regarding trademarks of the European Union and the designs and community models will still be applied, as well as the Regulation that governs the border measures in order to fight against the commercial piracy or the Procedural Regulations regarding the exercise of the legal actions, among others.

The effects of the Brexit regarding the Industrial and Intellectual Property rights and other related matters are, therefore, delayed until January 1st 2021.

TRADEMARKS

As from January 1st 2021, the registration of trademarks of the European Union will be no longer effective in the United Kingdom, although the rights arisen from them will not be lost and the scope of territorial protection of the Union trademarks will be limited to the territory of the remaining 27 Member States. Legal measures have been taken in order to nuance the effects of this solution and safeguard the rights of the trademark holders. We will broaden the information about the situation of the trademarks protection when news occurs on this regard.

We summarize below the most important changes that will occur in the field of the trademarks protection of the EU and international trademarks with EU designation with the effective solution of the United Kingdom after the end of the transitory period foreseen for 1.1.2021, according to what has been published by the British Government, the EUIPO and the WIPO:

What will happen with my trademark in the european union as from 1.1.2021?

The British Government will automatically grant to the holders of registered European Union Trademarks (EUTM) a new right “comparable right” (Comparable UK Trademark) in the United Kingdom, registered at the United Kingdom Trademarks Office and without any loss of priority or preemption.

The Comparable Trademark will be granted automatically, without the need of incurring in the payment of any official fee. This trademark will have the same status, the same priority date, seniority, application, registration and renewal as the corresponding EUTM, so that all the EUTMs that are registered at the end of the transitory period will be considered as if they have been filed and registered pursuant to the United Kingdom Law.

Therefore, it is important to review the ownership and addresses registered in the European Union trademarks since, after the solution date, said trademarks and with said data will be exactly those registered at the United Kingdom Trademark Office (UKIPO).

Our recommendation is to review all the available European Union Trademarks and analyze on a case-by-case basis if the trademark is being in the United Kingdom and/or there is an interest of having a trademark protection in this territory, in order to take the appropriate decisions in each case.

It should be emphasized that the holders of a Comparable Trademark will not receive a grant certificate of the trademark by UKIPO, but indeed they will be able to obtain the information and data about this registration in the UKIPO database. The number of the Comparable Trademark will be UK009 + the last eight digits of the European Union trademark.

The holders of the EUTM will also have the possibility to renounce (opting out) to the Comparable Trademark, if it is not of their interest. Said opting out must be requested by the holder at the United Kingdom Trademarks Office (UKIPO) which will grant, unless the trademark has been used in the United Kingdom, or that the Comparable Trademark has been object of assignment, license or security right – if there is no agreement from all the interested parties – or that proceedings have been lodged (especially of infringement, opposition, nullity or expiration) based on said trademark.

What will happen If my european union trademark is still in process on 1.1.2021?

For this case, a term of 9 months will be opened as of 1.1.2021 to apply the same trademark in the United Kingdom (opting in), without losing the priority. In this case, the holder must pay the usual fees corresponding to the trademark application in the United Kingdom. Thus, the holder will obtain the same trademark application in the United Kingdom as national trademark, which will follow its registration procedure as any other national trademark in the United Kingdom.

If it is urgent to obtain a definitive protection of your trademark in the United Kingdom, we recommend that in parallel with the trademark application of the European Union, you proceed to apply the trademark directly in the United Kingdom given the usual agility of UKPTO, if there is a need to count with a granted registration. Another advisable option is to apply the EUTM as soon as possible in order to be granted before 1.1.2021.

And if my trademark is an international one designated by the union?

As regards the International Trademarks designated by the European Union, the WIPO, in its communication 2/2020 dated 30.1.2020, has only informed that these trademarks will continue having effects in the United Kingdom during the transitory term and that, after said period, the United Kingdom will take measures for said trademarks to continue having protection in the United Kingdom.

What are the effects that the brexit has for the renewal of my trademark?

The Comparable Trademark must be renewed on the same date as the European Union trademark, having to pay the corresponding fee at the UKIPO. This office sends a notification to the holders of the trademark reminding them about the expiration of the legal life of the trademark and, therefore, about its renewal.

The office recognizes that it will not be possible, given the lack of material time, to do it in due time and consequently articulates a procedure according to which the reminder regarding the renewal will be sent to the holder as soon as possible, indicating to the holder that the Comparable Trademark has expired and granting an extra term of 6 months as of the date of the letter within which the holder will be able to renew the registration. Until July 1st 2021, this extra term will not imply the payment of an additional fee for untimely renewal.

The renewal in advance of an EUTM registration expiring after January 1st 2021 will have no value in the United Kingdom, where the corresponding renewal fee of the Comparable Trademark will have to be paid.

The trademarks which expire within the six months immediately before January 1st 2021 and that have not yet been renewed within the grace period considered in the EUTM Regulation will lead to the creation of a Comparable Trademark by the UKPTO, which will have the status of “expired”. If within the grace period granted by the EUTM Regulation the EUTM registration is renewed, the renewal and the status will change to “in force”. If the EUTM is not renewed within the grace period, the Comparable Trademark will be cancelled from the register of the UKPTO with effect on January 1st 2021.

Effects of the brexit on the nullity actions

On January 1st 2021 there will be cancellation/nullity actions pending of resolution at the EUIPO. The nullity/cancellation resolution will only affect the Comparable Trademark insomuch as its arguments are applicable in the United Kingdom.

What will be considered as effective use of my trademark after the brexit?

As regards the use, the general rule in the United Kingdom is that the national trademarks will be liable to expiration if they have not been used during the last five years in the country. Applying this automatically to the Comparable Trademarks would be unfair given that many EUTMs have never been used in the UK.

Therefore, the British legislation provided that any use in the European Union, either in the United Kingdom or outside, which has been carried out before 1.1.2021, counts as a valid use for the Comparable Trademark in the United Kingdom. Instead, the use as of 1.1.2021 in the European Union (outside the United Kingdom) will not be considered as valid use for the Comparable Trademark.

In any case, the 5-year suspension period as regards the obligation of proving the use starts for the Comparable Trademark as of the date on which the first use took place or as of the registration date of the trademark as provided the EUTM Regulation.

Therefore, if you wish to maintain your rights in the United Kingdom it is advisable not to stop using the trademarks in this territory or, said use has not yet started, to start as soon as possible.

And if my trademark is well-known?

Finally, as regards the notoriety, it has to be taken into account that, if the trademark was well-known in the 27 Member States of the European Union, but not in the United Kingdom, it will be considered as well-known in the United Kingdom until 1.1.2021, but for the oppositions filed as of said date, based on a comparable UK Trademark, the use in the United Kingdom will have to be assessed in order to establish that possible notoriety.

And the representation rights?

During the transition period, the legal representatives of the United Kingdom will continue having the right to represent their clients at the Intellectual Property Office of the EU (EUIPO).

It also provides that the United Kingdom will not modify the address for notifications for the Comparable Trademarks of the United Kingdom for a period of three years after the end of the transitory period.

COMMUNITY DESIGNS

After January 1st 2021, the Community Designs and the Community Designs filed through the Hague Agreement (INN) will no longer be valid in the United Kingdom and will be replaced automatically and free of charge by Designs in the United Kingdom, which will continue having the same number of the Community Design or International Industrial Design, placing before the digit (CD) to the number that has said Community Design or International Industrial Design.

For the CDs and the INNs under process on January 1st 2021, a maximum period of 9 months is granted as of January 1st 2021 for the re-registration in the United Kingdom, which can affect a few designs due to the short time elapsed between the application and the registration, but this group of unregistered designs includes those about which the deferment of publication has been requested.

The current legislation of the United Kingdom does not allow the deferment of the publication of a design, but for those designs from a CD deferred in publication a deferment of its publication can be obtained for a maximum period of 12 months provided that this period does not exceed 30 months allowed by the CD.

There will be the possibility of protection exclusion in the United Kingdom, provided that the UK Office is notified that the re-registration in the UK is not desired.

In the Regulation governing the Community Design there is the figure of the unregistered Community Design, which is valid for a maximum period of three years from the disclosure date in the European Union, continuing to be in force for all the designs until December 31st 2020. As of January 1st 2021, an Unregistered Design is created in the United Kingdom which will confer a protection for three years for those designs that are disclosed in the territory of the United Kingdom. Therefore, the disclosure in the European Union will not automatically mean having the Unregistered Design in the United Kingdom.

Finally, regarding the renewal of designs, it should be taken into account that the renewal of the designs whose expiration is before January 1st 2021, must be paid at the EUIPO or the WIPO, depending if it is CD or INN. CDs or INNs with a renewal date after January 1st 2021 must be paid at the EUIPO or WIPO, depending if it is CD or INN, for the community part and at the British Office for the protection part corresponding to the United Kingdom.

PATENTS AND SPC

The rights of the patents do not change in relation to the current system, since the European Patent Convention is not an European Union Convention and therefore the United Kingdom will continue belonging to said Convention after January 1st 2021; so as regards patents there will be no change, being the applicants able to have the two channels of patent protection open in the United Kingdom so far, one of them by depositing the patents directly at the British Patents Office and the second through the European Patent Convention.

The only changes that could take place are in the future Unitary Patent and the European Patents Court, that if they are Conventions of the Community scope and where the United Kingdom intends to remain, has ratified its permanence in both, the last one on April 26th 2018 in the Unified Patent Court (UPC), which would be something unusual because these Conventions would be governed by the Community Laws, from which the United Kingdom intends to break itself away. These Conventions, both the creation one of the Unitary Patent Convention and the Unified Patent Court Convention have not yet been implemented, being their management procedure and patents processing administered by the European Patents Office. We will keep on observing the changes that may occur and the possible start-up of these changes when the United Kingdom leaves the European Union.

Regarding the Supplementary Protection Certificates (SPC in English) for the protection of medicinal and phytosanitary products, they can continue to be applied for in the United Kingdom as at present during the transition period ending on December 31st 2020. The legal framework of the current SPCs in the United Kingdom is maintained during the transition period and the existing SPCs in the United Kingdom will remain valid.

Because SPCs are not granted as single rights throughout the European Union, but they are granted by each country as national rights, it will not be necessary that the United Kingdom creates a right comparable to the one of the European Union at the end of the transition period, given that the Regulations are created and in force in the United Kingdom, for being the national rights the ones granting both SPCs and the extensions to medicines for pediatric use.

In any case, we are at the disposal of our clients and friends in order to solve any doubt they may have and to design an action means as regards the Brexit and to develop the most suitable one for each case.

Anna Jarques

Anna Jarques

Responsable Marcas de la Oficina de Barcelona. Departamento Marcas. Abogada.

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