Hot Spot: IPR changes resulting from Brexit

Key Changes to Intellectual Property Rights (IPR) Resulting from Brexit

What is it?

The UK Government Intellectual Property Office (IPO) has recently held a webinar in order to highlight changes to IPR resulting from Brexit. The webinar highlighted three key areas that will be the subject of changes at the end of the Brexit transition period, for more detailed guidance refer to the enclosed links.

1. Parallel Trading Changes

Current rules mean that IPR are exhausted after goods are first placed on the market in the EEA. Therefore, a trader does not require the IPR owner’s (ie trademark owner) permission to subsequently sell these goods elsewhere in the UK or EU. At the end of the Brexit transition period GB and EU will be separate markets.

Therefore, first placing goods on the market in GB will not exhaust IP rights in EEA. Permissions from IPR holders must be in place to first place goods on the market in the EU, members may not have these in place currently.

Refer to the links below for more detailed information:

https://www.youtube.com/watch?v=XHZFtWGwHN8

https://www.gov.uk/guidance/exhaustion-of-ip-rights-and-parallel-trade-after-thetransition-period

2. EU Trademarks and Registered Designs

All registered trademarks and designs currently registered, or in the process of being registered, on EU registers will automatically be granted a separate UK trademark or registered design at the end of the Brexit transition period.

This will be done automatically and Free of Charge initially. From 1st January 2021 onwards these UK registrations will be separate from the EU registrations and so if, or when, they require renewing it will be necessary to pay to separately maintain a UK registration as well as an EU one. The seniority date from the original registration will be carried over to the UK trademark/ registered design.

See links below to IPO website info.

https://www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks

3. Unregistered Community Designs (UCD)

Unregistered designs are 2 or 3D items that depict a product and apply to items that may not be specifically protected by a patent or a trademark for example. A UCD currently gives its owner the right to prevent unauthorised copying of the design and subsequent dealing in the related article or product in the EU.

No registration process is currently required and the protection lasts 3 years from when the design was first disclosed. Current UCD protection comes from EU Law only as no equivalent UK law exists.

At the end of the Brexit transition period an equivalent UK law for protection of unregistered designs will be introduced, called a Supplementary Unregistered Design (SUD). Existing UCD designs will remain protected in the UK for the balance of the 3 year period. It is important to recognise that this new SUD protection will not be recognised in the EU going forward. Therefore, first disclosure of the design must take place in the UK to be protected under SUD. If a design is first disclosed in the EU it will not establish SUD but it may destroy the “novelty” in the design and prevent SUD. Similarly, first disclosure in the UK BV002301 29th October 2020 may prevent UCD being established in the EU.

Members should consider seeking expert advice before deciding how, when and where to first disclose designs in order to establish unregistered protection in the UK and the EU. See link below for more detailed info.

https://www.gov.uk/guidance/changes-to-unregistered-designs-after-the-transition-period

Why is it Important?

It was stated during the webinar that any potential trade deal between the UK and the EU is unlikely to change the above aspects of intellectual property protection.

The UK has now left the EU and become a separate sovereign state, this has resulted in the necessary duplication of IPR registers amongst other things. It is strongly recommended that members carefully consider the detail of these changes to ensure that they have the appropriate measures in place to continue to protect their IPR after Brexit.

Published: 30th October 2020