19th January 2021
On 1 January 2021 changes to UK intellectual property law were introduced to coincide with the end of the Brexit transition period. Partner Megan Jefferies answers questions about the new rules and explains how they support the UK’s departure from EU IP systems.
If a business has a European trade mark or portfolio of European trade marks registered, will they continue to be protected against infringement in the UK after 31 December 2020?
The short answer is no. Any EU trade mark will not cover the UK after the end of the transitional period.
The UK government has made it very clear that each EU mark will be cloned and an equivalent UK trade mark automatically created in the UK trade marks register. That new cloned UK mark will benefit from the same filing date as its EU ‘parent’ mark and cover the same goods and services to ensure the business which owns the EU mark does not lose any of the protection provided by that the EU mark. There will be no fees payable by the trade mark owner for this process.
Some businesses could end up with two UK marks for the same brand covering the same goods and services, if they originally applied for a UK mark and an EU mark, perhaps applying for the UK mark and then the EU mark later down the line when their business expanded.
Trade marks last for 10 years in the UK and EU before they need to be renewed. The owners of the newly cloned marks wouldn’t be obliged to renew them. If they already had an existing mark in the UK which covered their requirements, they wouldn’t have to pay to maintain both marks on the register.
What happens if an application for an EU trade mark has been made before 31 December but wasn’t granted before the end of the transitional period?
Any applications for EU marks which were pending on 31 December will not be automatically cloned but the applicants will be granted a grace period of nine months (i.e. until 31 September 2021) within which they can apply for a UK mark. These will have the same filing date as the EU application. The usual fee for a UK application will be payable.
What do UK businesses need to be aware of after the end of the transitional period in relation to maintaining their EU trade mark protection?
Both EU and UK trade marks are vulnerable to challenge by third parties if the marks have not been applied to the goods or services in respect of which they’re registered for five years. At present, use of a mark in the UK would constitute use of that mark in the EU.
After the end of the transitional period, use of the mark in the UK will not constitute use in the EU. Therefore, if a UK business has an EU mark it would be well served to ensure it is able to prove the mark has been used within the EU as well as in the UK to avoid the EU mark being challenged. This may include a website directed specifically at a different country in the EU, for example a website which displays prices in Euros. It is sensible to keep documents which evidence sale to EU customers, such as order forms, receipts, invoices and the such like in case of being challenged on this point.
The UK government has suggested that use in the EU prior to 1 January 2021 will constitute use in the UK. Any European rights holders who obtain a cloned UK mark after the end of the transitional period who may not have used their mark in the UK will therefore not find their mark vulnerable to challenge in the UK. However, once five years has passed, i.e. from 1 January 2026, use in the EU will not be taken into account when considering whether a mark has been used in the UK.
How will the UK’s departure from the EU affect patents, copyright and design rights?
Patents are not governed by EU law and so there will be little if any change to the patent regime after 31 December 2020. The position regarding design rights is similar in relation to trade marks. In the UK and Europe, copyright is an automatic right, not one which requires registration, so there are not the same administrative issues around our leaving Europe. The key change will be that, in time, the interpretation of the UK and EU courts determining issues of copyright infringement may differ, leading to a divergence of the laws on copyright infringement in the two different jurisdictions.
Please click here to read a shorter version of this article in The Business Exchange.