Brexit is causing a great deal of uncertainty for business. Many of our clients and associates are asking us what the impact of Brexit will be on IP once the UK leaves the EU.
We have pulled together what we know so far, and what Brexit could mean for you and your IP now and after the UK leaves the EU.
Both EU Trade Marks and Community Designs (registered and unregistered) are granted by the EU Intellectual Property Office and are governed by EU directives and regulations. Therefore Brexit is likely to have a significant impact on Trade Marks and designs. European patents are largely unaffected by Brexit.
A note on ‘Brexit Day’
We have used the term ‘Brexit Day’ throughout this site. This is the day on which EU law ceases to have direct effect in the UK. This may be because the UK has left the EU without a deal (“no deal”) or because the implementation period (if agreed in a “deal”) has ended. These are the current scenarios:
Brexit Day will be 31st October 2019 (11pm) should the UK not ratify the deal (“no deal”) and participate in EU parliamentary elections; or,
Brexit Day will be 31st December 2020 (11pm) should the UK ratify the deal (“deal”). This is the end of the “implementation period” during which EU laws (including those pertaining to IP) will continue to have effect in the UK.
We will update this page as the talks progress.
Trade Marks and Designs
An EU Trade Mark provides protection throughout the whole of the EU by means of a single, unitary registration, offering trade mark proprietors a cost effective way of protecting their trade marks in 28 different countries.
There are two types of design protection in the EU, namely, Registered Community Designs (RCDs) which are obtained by filing an application at the EUIPO and Unregistered Community Designs (UCDs) which automatically come into effect as soon as a novel product is made available in the EU.
EU Trade Marks (EUTMs) and Registered Community Designs (RCDs)
Whether or not a ‘deal‘ is reached, both the EU and the UK government agree that existing right-holders should not lose out. The draft agreement on the UK’s exit, that was approved by cabinet on the 15th November, stated that in the event of a ‘no deal’ Brexit, existing right-holders would be granted a separate, but equivalent UK right, at minimal cost and administrative burden.
The UKIPO has now confirmed that it will protect the rights of trade mark and design holders, even in the event of a ‘no deal’. As such, all existing registered EUTMs and RCDs will be automatically granted an equivalent UK right. This will involve an automatic ‘cloning’ of the existing registration, at no cost to the right holder. However, pending applications will need to be re-filed within a 9 month period. The following scenarios demonstrate how the system will work:
Scenario 1 - No EUTM or RCD application filed on Brexit day
Separate EU and UK applications will need to be filed (directly or via the International (Madrid/Hague) systems).
Scenario 2 - A pending EUTM or RCD application on Brexit day
Any EUTM or RCD application which is pending when the UK exits the EU will need to be re-filed in the UK within the following 9 months. The UKIPO will, however, recognise all filing dates and claims to earlier priority and UK seniority, which are claimed in connection with the corresponding EU application.
Scenario 3 - A registered EUTM or RCD on Brexit day
At 11pm UK time on Brexit day all existing registered EUTMs and RCDs will be granted an equivalent or “comparable” trade mark or design registration in the UK. This will involve an automatic cloning of the existing registration, at no cost to the proprietor. However, the new UK national right will require its own separate renewal. Right holders will, however, be able to ‘opt out’ if they do not want protection in the UK. The same provisions will apply to International trade mark and design registrations which are protected in the EU. These cloned registrations will, however, become standalone national UK rights, rather than International registrations designating the EU and UK.
Unregistered Community Designs (UCDs)
Although UCDs are free, and come into effect automatically, they offer a shorter term and more limited form of coverage compared to RCDs. That said, they are useful rights, and provide pan-EU protection instead of, or alongside, RCDs.
It is worth noting that there is also an unregistered UK Design Right, which is similar to the UCD, but longer term (up to 15 years compared to 3). Therefore, to the uninitiated, it may seem that loss of the UCD may not pose a problem. This is not the case.
Aside from the term of protection, the unregistered UK Design Right differs from the Unregistered Community Design right in so far as the former does not cover ‘surface decoration’. Therefore, the loss of UCD would leave designers of novel surface decoration (who choose not, or are unable, to file a registered design) exposed.
With regard to unregistered design rights, the UK government has confirmed that all UCDs which exist at the point that the UK leaves the EU, will automatically continue to be protected and enforceable in the UK for the remaining period of protection of the right. The government has also committed to introducing equivalent protection in the UK through new legislation. The following scenarios demonstrate how the system will work:
Scenario 1 - A UCD subsists on Brexit day
The UK will continue to recognise the right, such that it is protected and enforceable in the UK for its entire term.
Scenario 2 - A UCD does not yet subsist on Brexit day
Newly generated UCDs will not cover the UK after this date. The UK government intends to create a supplementary unregistered UK Design Right which will mirror the UCD’s coverage of surface decoration.
We have provided some advice on trade marks and designs here.
Get in touch about your trade mark and design requirements.
European and UK Patents are not governed by EU law. The European Patent Convention (EPC) is a non-EU agreement, and the European Patent Office (EPO) is a non-EU body. As such, with respect to patents, it’s “business as usual”.
Vault IP and other UK-based European patent attorneys can continue to act before the European Patent Office, and file and prosecute European Patents.
There are some narrow, limited areas of existing patent law which are affected by EU law, and the UK Government has set out a guidance note on these issues in the event of ‘no deal’.
The most significant effect in terms of patent law as a whole, concerns two systems which have not yet been passed into law- the UP and UPC.
The Unitary Patent (UP) and Unified Patents Court (UPC)
Although not yet in operation, the Unitary Patent promises to move closer to an ‘EU patent'. Unitary Patents will eventually be designated at the end of the existing European Patent process, and as such things will not be significantly different.
That said, it is unlikely that the UK will be covered by the Unitary Patent, and should protection in the UK be desired, it will need to be designated as a separate state (as it is at the moment). UK companies will be able to designate the Unitary Patent via the existing European Patent process, and therefore will be able to take advantage of this system.
Currently, European Patents cannot be enforced centrally. A country-by-country approach must be taken. The Unified Patents Court promises to solve this problem- offering a single court to enforce both UPs and ‘traditional’ European Patents.
The UK has played a key part in the UP and UPC processes, and the UK Government has stated that it is keen to remain a part of the UP and UPC. Whether that is possible remains to be seen. The UP and UPC were predicted to come into force in 2019, although progress has stalled based on a constitutional challenge in Germany. Therefore notwithstanding Brexit, there is a lot of uncertainty around whether the UP and UPC will ever become a reality.
We have provided some advice here.
Get in touch about your patent requirements.
We’ve put together a Brexit IP timeline to help you understand what is happening, what you need to do and when.
Brexit IP Timeline
23rd June 2016
The UK votes to leave the EU.
29th March 2017
The UK Government triggers Article 50 TEU.
19th March 2018
A Draft Agreement from the EU and UK released. Article 50 of the Draft Agreement on the withdrawal of the UK from the EU indicates that both the UK and the EU favour providing a UK national right equivalent to existing EUTMs and RCDs once the UK leaves.
This is only a draft agreement. If your rights are business critical and you need absolute certainty of protection in the UK, you may want to consider registering in the UK now.
15th Nov 2018
25th Nov 2018
31st Oct 2019
The ‘no deal’ Brexit day. If the UK and EU fail to reach a deal, including a transition period, then the UK will leave the EU on this day. The UK government have published guidance on patents, trade marks and designs if there is no deal.
However if a deal is passed in the House of Commons before this date, then the UK will start the process to leave the EU at that point, with the likelihood that a transition period will be implemented.
The intention is that holders of EUTMs and RCDs which have been registered prior to this date (or the end of the transition period in the case of a deal), will be able to obtain a comparable UK right, with minimal administrative burden.
31st Dec 2020
The likely end of the transition period. As of this day, the UK will no longer be part of the EU.
The intention is that holders of EUTMs and RCDs which have been registered prior to the end of the transition period, will be able to obtain a comparable UK right, with minimal administrative burden.
9 month period
Based on the UK government’s guidance, it is likely that owners of a pending EU trade mark or registered Community design will be able to file an equivalent UK right within 9 months of the date of exit. Therefore this is likely to be either:
31st July 2020 in the event of no deal; or,
30th September 2021 in the event of a deal with a transition period.