Effects of Brexit on European intellectual property rights in the UK
The United Kingdom’s withdrawal from the EU (Brexit) took place on 31 January 2020, which in part has implications on property rights.
With regard to European patents, nothing changes, since the United Kingdom remains a member of the European Patent Convention, which is not Union law but an international treaty to which, for example, Switzerland, Norway and Turkey are also members. This means that it will continue to be possible to validate granted European patents in the United Kingdom.
Supplementary protection certificates for European patents that already exist or have been applied for will continue to exist or will be continued. In addition, it will be possible to apply for new protection certificates in Great Britain from 1 January 2021.
Whether the Unitary Patent sought by the EU will also apply to Great Britain is not yet foreseeable.
Non-technical property rights
With the transition period regulated by the withdrawal agreement, which ends on 31 December 2020, some of the property rights previously registered for the EU, such as the Union trade mark and the Community design, will formally lose their validity for the United Kingdom.
However, a corresponding UK right will be automatically generated for the following EU property rights registered before 1 January 2021:
- Union trade marks
- international registrations (IR trade marks) with designation EU
- Community designs (EU designs)
- International designs with designation EU
The property rights are given the following new name:
|property right||new name||example|
|old name||new name|
|Union trade mark||UK009 prefixed||000025197||UK00900025197|
|IR trade mark||UK008 prefixed||000340513||UK00800340513|
|EU design||9 prefixed||004048098-0004||90040480980004|
|Intern. design||8 prefixed||DM/069 629 (WIPO) D069629-0001 (EUIPO)||806962900010000|
There are no costs or further examinations for this. If a generation of a corresponding UK law is not desired, you must actively object to it.
For applications of the above-mentioned IP rights still pending on 1 January 2021 corresponding UK IP rights can be applied for within 9 months after the end of the transition period, thus until September 30, 2021, by claiming the priority dates of the European or international IP rights or the European designation. The application date is kept.
For new applications in 2021 a separate application for a corresponding UK national property right must be filed. This can be done directly with the UK IPO or via an international trade mark or design application with the WIPO.
It should be noted that the use of a trade mark in the EU before January 1, 2021 is considered use of the comparable national trade mark even if it has not been used in the UK.
Even after 31 January 2020, cancellation or invalidity proceedings already pending before the EUIPO may still have an impact. If the Union trade mark is declared invalid or revoked after 31 January 2020, this also applies to the comparable national trade mark, provided that the corresponding reasons are also present in the UK. On the other hand, the proceedings pending before the UK courts will only affect the respective national trade marks created there from January 1, 2021 onwards.
Furthermore, license agreements and delimitation agreements which concern Union trade marks or Community designs or relate to the territory of the EU should be examined and possibly adapted.
If you have any further questions, please contact us.