Big changes in intellectual property at the UK/EU interface

The UK has not since 31 December 2019 been a member state of the EU.  From 1 January 2021 – the day after the end of the Transitional Period that followed the UK leaving the EU – important changes have been triggered as to the ways in which businesses can protect and monopolise certain types of IP rights at the interface between the UK and the EU.

Below is a summary of these changes, but the detail is technical and specialist legal advice should prudently be sourced in where IP rights affected are commercially important for your business.

Rights of representation

As from 1 January, UK solicitors, attorneys and other lawyers who do not have an establishment in one of the remaining EU member states have lost their right to file for and represent clients in new EU applications for registered trade marks and registered designs, and in any ensuing proceedings, in the European Intellectual Property Office (EUIPO).

We here at HLaw will be unaffected by the above as all trade mark and design work involving the EUIPO is being done by us as from 1 January 2021 from our HLaw Brussels office.

UK legal representatives can, though, continue to represent clients in EUIPO trade mark and design applications, and proceedings arising from these through to the end, where applications or proceedings were still ongoing at the end of the Transitional Period on 31 December 2020.

UK-only trade mark and design registrations

With effect from 1 January 2021, the UK Intellectual Property Office (UKIPO) will (generally speaking) create a comparable UK-only trade mark registration, or as applicable re-registered design registration, for each registered EU registration. These registrations are to be automatically recorded on the UKIPO Register without need for any application or fees to be paid by the proprietor.

These comparable and re-registered UK-only registrations will have the same status as if they had been applied for and registered under UK law, will keep the original EU application filing date (registration being effective as from that filing date), and will be fully independent UK-only UK trade mark or design registrations that can be challenged, assigned, licensed and renewed, in each case separately from the original EU registration from which they derive.

Pending EU applications

Businesses which have pending EU applications for trade mark and design registrations as at 1 January 2021 will have a period of nine months to 30 September 2021 within which to apply to the UKIPO for the equivalent UK-only protection, the creation of a comparable registration in the UK will not be automatic (as it is in the case with already-registered rights).  In this case, business will have to pay normal UKIPO fees thereafter for their applications to be taken through to registration.

International registrations which have designated the EU

The UKIPO will create a re-registered UK-only registration (trade mark or design) for every international registration designating the EU which was in force on 31 December 2020, and these registrations will continue to have protection in the UK.

Where an international application designating the EU is still pending after 31 December 2020, the proprietor has a period of nine months to 30 September 2021 within which to apply to the UK IPO for the same UK-only right, although with the normal UK IPO fees to be payable to take the application through to registration.

Unregistered (EU) design rights

Unregistered (EU) design rights that arose before 31 December 2020 will continue to receive protection in the UK for the remainder of their three-year term.

Supplementary Unregistered Design right

From 1 January 2021, a new supplementary unregistered design (SUD) right becomes available under UK law.  A SUD will confer similar protection to that conferred by an EU Community unregistered design, but for the UK only.

For an unregistered design to be valid it needs to be ‘original’.  This means designed independently and not commonplace in the design field in question.  So, from 1 January 2021, businesses may need to make a judgement as to whether they should first put a product (which incorporates an original design) onto the market in the UK or in the EU or indeed elsewhere.

IP rights in goods first placed on the market

IP rights in UK goods first placed on the market in the UK by, or with the consent of, the owner of IP rights in those goods will as from 1 January 2021 no longer be ‘exhausted’ in the European Economic Area (EEA).

Exporters of those goods (already placed on the market in the UK) from the UK to countries in the EEA might therefore need, as from 1 January 2021, the licence or agreement of the rightholder in the EEA to the importation of those goods into the EEA, absent which importers (and exporters) may be exposed to infringement proceedings.

IP rights in goods first placed on the market in the EEA by, or with the consent of, the owner of the IP rights in those goods will after the importation of the goods into the UK continue to be treated as ‘exhausted’ in the UK.  This means that IP rights in parallel exports from the EEA into the UK are unaffected as from 1 January 2021.

New protection for geographical origins

A new regime for the protection of geographical origins (GIs) (such as Scotch Whisky or Stilton Cheese) in the UK is being brought into effect as from 1 January 2021.  Care will need to be taken to avoid infringing these protections.

IP rights at the UK border

For the protection of IP rights at the UK border, new arrangements as administered by HMRC have come into effect as from 1 January 2021.

Copyright works

Most UK copyright works (such as written text, film, music and designs, whether in the hard copy or in electronic form) will still be protected in the EU from 1 January 2021 onwards.  Similarly, most EU copyright works will continue to be protected in the UK.

Patents

The European Patent Office (EPO) is not an EU agency and so the UK’s leaving the EU does not affect the current European patent system.  Existing European patents covering the UK are also unaffected.

Recommended: early review of UK: EU interface IP rights

For some businesses, these changes may not be of substantial commercial importance, because of the nature of the services and goods which they supply, and the territories into which they sell and supply services and goods.

For those who are affected by these changes, though, the prudent course in our recommendation is to source in from specialist IP legal suppliers (such as ourselves) an early review of their UK : EU interface IP rights, including any effects on these of the end of the Transitional Period.

This piece was prepared by Robert Humphreys and Tristan Morse, both dyed in the wool IP experts.

All the thoughts and commentary that HLaw publishes on this website, including those set out above, are subject to the terms and conditions of use of this website.  None of the above constitutes legal advice.  Much of the above will no doubt fall out of date and conflict with future law and practice one day.  None of the above should be relied upon.  Always seek your own independent professional advice.

Humphreys Law