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IP after Brexit: Are my IP rights still protected?

2020-11-01

Introduction

The UK has formally left the European Union (the “EU”) on 1 February 2020. According to the Withdrawal Agreement, the current transition period where EU Laws remain applicable to the UK will be ending on 31 December 2020 (the “Exit Day”). After this date, any EU laws and regulations that have not been implemented domestically into UK law will cease to have any effect on the UK i.e. starting from 1 January 2021.

Prior to Brexit, IP laws in the UK are essentially composed directly of EU regulations. After the Exit Day i.e. as of 1 January 2021, IP rights such as designs and trademarks previously registered in the EU will only cover the remaining EU member states, and will no longer cover the UK. This article will explore the effects of Brexit, and how UK IP rights holders may ensure that their rights remain unaffected after the Exit Day.


Registered trade marks and designs

Prior to Brexit, trade marks and Community Registered Designs (“RCD”) that have been registered with the European Union Intellectual Property Office (“EUIPO”) (“EU Trade Marks”) are protected throughout the whole of EU in every member state including the UK, under one single unitary registration.

The UK Government has announced that after the Exit Day, registered EU Trade Marks and registered RCDs will no longer cover the UK region. Instead, the UK Intellectual Property Office (the “UKIPO”) will create comparable UK registrations with equivalent rights for every EU Trade Mark and RCD, such that the rights owners do not have to take additional steps to re-file those registrations in the UK. There will be no cost to effect this “cloning”. The registration numbers will also be preserved except that they will then be prefixed with different letters indicating the different types of registrations. Any renewals after the Exit Day must be attended to separately in the EU and UK respectively.


Unregistered trade marks and designs

For pending EU Trade Marks and RCDs that are not yet registered as of 31 December 2020, this “cloning” will not be applicable. Applicants must re-file their applications with the UKIPO within the 9 month grace period starting from 1 January 2021 in order to secure protection in the UK in addition to the EU. Within this grace period, all UK applications may claim priority based on the pending EU application and thus enjoy the same filing date and priority as the pending EU application.

Any UK applications filed post the Exit Day will be examined by the UKIPO which is independent from the EUIPO. It is important to note that the EUIPO and UKIPO will not issue notifications to applicants of pending EU applications to remind them to re-file their applications in the UK. Applicants of any pending EU applications will have bear in mind that re-filing with the UKIPO is essential within the 9 month grace period so as to preserve the earlier filing dates of their applications in the UK.


Non-use cancellations of registered EU trademarks

The issue of non-use cancellations is particularly relevant in the context of Brexit since there are many EU trademark owners who have only been using their registered trademarks in the UK, or alternatively, in anywhere in the EU but not the UK. While the use in either region may, to a great extent, be sufficient for establishing genuine use of their trademarks prior to Brexit, this may no longer be the case after the Exit Day.

For comparable UK trademarks cloned in the UK based on prior EU trademark registrations starting from 1 January 2021, many of these marks may not have been put to use in the UK region at any time within 5-years of the date of registration in the EU, and therefore may be subject to full or partial revocation on grounds of non-use. As such, even if comparable UK rights have been created automatically after the Exit Day, those trademarks may still be prone to being subsequently revoked meaning that there might be insufficient protection for those new comparable rights. Hence, there are concerns that such trademarks may be vulnerable to being challenged in either the UK or the EU in this respect.

The UKIPO has confirmed that any use of a EU Trade Mark, whether in the EU or the UK before the Exit Day, will count as genuine use of the comparable UK registration. This means that if a EU Trade Mark had been used extensively anywhere in the EU but not the UK before 31 December 2020, such evidence of use can be used to defend any cancellation action that may be filed against the comparable UK registration post-Exit Day.

The trade mark non-use period in both the EU and UK is 5 years. Any use that is accrued before the Exit Day will be taken into account, but use post-Brexit will not be considered for establishing use under the new UK policy.

Further, trademark owners are reminded that any opposition and/or cancellation actions filed with the EUIPO will not cover the comparable UK trademark. Applicants are required to file a parallel cancellation action locally in the UK, against the comparable UK trademark that will be created after the Exit Day.


Patents

Patent protection will largely remain the same. Applicants may continue applying for a EU patent via the UKIPO or directly to the European Patent Office (the “EPO”), or via an international patent application filed under the Patent Cooperation Treaty.

As the EPO is not an EU agency, Brexit shall have no effect on the current European patent system. The UK will continue to be one of the 38 contracting state to the European Patent Convention, which is the international treaty that established the EPO. As such, Applicants will be able to file their applications with the EPO and, upon grant, request for validation in the UK and other countries of interest. Existing EU patents covering the UK shall also remain unaffected.

Furthermore, the UK will remain a member of the Paris Convention, and applicants who have filed for patent protection in the UK may still subsequently claim priority of that application for any overseas patent registrations, and vice versa.

The main difference post Brexit lies in the Unitary Patent System, which previously allowed EU patent holders to designate their registration in all 25 participating EU member states, by filing one single application with the EPO. The UK government has confirmed that they will not participate in this Unitary Patent System post-Brexit. With the absence of UK’s involvement in the Unitary Patent System, patent proprietors will not be able to protect their inventions in the UK by using this unified system.


Copyrights

There is no uniform regulation in place governing EU copyright at present. Although each EU country may provide separate national rights for copyright, it is largely harmonized by a number of different internationally treaties. Within the EU, there are certain EU cross-border copyright arrangements in place where member states shall provide reciprocal protection and benefits to each other. However, post-Exit Day, all these reciprocal EU cross-border arrangements will be brought to an end.

Having said that, most copyright works in the UK, such as books, films and music, will continue to be protected in the EU and the UK respectively due to the UK’s participation in the international treaties on copyright. For this reason, EU copyright owners may rest assured that their EU copyright works will continue to be protected in the UK. This applies to works made before and after 1 January 2021.


Domain names

Prior to Brexit, any person being a resident of a member state of the EU or European Economic Area (“EEA”) is eligible to register a .eu domain name. However, post-Exit Day, UK citizens and residents, who do not have ties to any EU/EEA member state will no longer be eligible to hold a .eu domain name.

From 1 October 2020 onwards, EURid, the registry responsible for the .eu Top Level Domain had begun notifying all UK registrants that they will lose their eligibility from 1 January 2021 onwards, unless they could demonstrate compliance with the .eu regulatory framework and update their registration data before 31 December 2020.

To retain the .eu domain, registrants must meet one of the follow criteria:

(1)   be an EU/EEA citizen, independent of where you live;

(2)   not an EU/EEA citizen, but resident in the EU/EEA;

(3)   an organization, business or undertaking that is established in the EU/EEA; or

(4)   have a registered office or principal place of business within the EU/EEA.

 

Any registrant who cannot meet the eligibility criteria as of 1 January 2021 will have their .eu domain names withdrawn.


Takeaway

As the Exit Day is fast approaching, IP owners should immediately start to identify which of their rights are likely to be affected post-Brexit so that additional steps can be taken within the prescribed periods of time to maximize protection of those rights. Applicants are advised to dual-file in the EU and UK, especially as we approach the Exit Day, as any pending EU applications will need to be re-filed in the UK in any event.

For any IP agreements in place that refer to EU Trade Marks, parties should review and consider whether any amendment must be made in view of the comparative UK registrations that will soon be created, such as obtaining assignments and/or licenses.

The impacts of Brexit are complex, and any UK legislation that was previously dependent on EU legislation must now be untangled and separated from the same. Whist there does not appear to be many material changes with respect to IP rights, given that the UK is no longer within the boundaries of any EU legislation, it remains to be seen whether UK laws in relation to IP will start diverging from those of the EU in the long run. Hence, proprietors of UK IP rights should continue to keep an eye on any updates to be proposed by the UK government in order to maintain and preserve their existing IP rights in the UK.


For enquiries, please feel free to contact us at:

E: ip@onc.hk                                                                        

W: www.onc.hk                                                                   

T: (852) 2810 1212

F: (852) 2804 6311

19th Floor, Three Exchange Square, 8 Connaught Place, Central, Hong Kong

Important: The law and procedure on this subject are very specialised and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.

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Ludwig Ng
Senior Partner
Lawrence Yeung
Lawrence Yeung
Partner
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