11th December 2020

Your Brexit IP Checklist

By Matthew Pryke & Stephen Farrant

With the end of the Brexit transition period imminent, Hamlins provides you with a quick guide to how Intellectual Property will be impacted from 31 December 2020 and a checklist of actions to take to ensure your brand is protected.

Hamlins advises clients from a plethora of different sectors on what Brexit means for their brand and can manage the administrative complexities in your IP rights on your behalf.

If you would like further information on how Brexit will affect your brand or advice on your specific circumstances to ensure you have the best protection in place, please contact Matthew Pryke.

Trade Marks

  • On 1 January 2021, the UK IP Office will issue a comparable UK trade mark for identical good and services for your existing EU trade mark.
  • This UK mark will transfer all of the rights held under your current EUTM and will, therefore, have the same legal status as if you had applied for and registered it under UK law.
  • Your EUTM will still continue to be valid, but only for the 27 member states not including the UK. Going forward you will have to manage your new UK trade mark and your EUTM as separate marks.
  • You will not need to pay for this comparable UK trade mark.

Action required if you have registered EU trade marks: none at this stage.

Action required if you have pending EU trade marks on 31 December 2020: apply to register a comparable UK trade mark immediately, or at the very latest before 30 September 2021, to benefit from the same filing date as the related EUTM application. The fees will be the same as applying for a UK trade mark.

Action required if you have not made an EU TM application: if you have plans to seek trade mark protection then you should contact us immediately so we can advise how best to protect your brand going forward and make sure your applications are made before the relevant deadlines.

Design Rights

Registered

  • From 1 January 2021, registered Community designs (‘RCDs’) will no longer be valid in the UK.
  • All registered and published RCDs will have comparable UK designs created, which will be recorded on the UK register. These will be treated as if they had been applied for and registered under UK law.
  • You will not need to pay for this comparable UK RCD.
  • Going forward you will have to manage your new comparable UK RCD and your previous EU RCD separately.

Action required if you have a registered RCD on 31 December 2020: none at this stage.

Action required if you have a pending RCD on 31 December 2020: apply to register a comparable UK RCD immediately, or at the very latest before 30 September 2021, to benefit from the same filing date as the related EU RCD application. The fees will be the same as applying for a UK design application.

Action required if you have a RCD which expired during 1 July 2020 – 31 December 2020: you must act now to apply for late renewal of your design. This will then be reflected in the corresponding UK design.

Unregistered

From 1 January 2021, unregistered Community designs (‘UCDs’) will no longer be valid in the UK. Some designs which received UCD protection may not qualify for the already existing UK unregistered design right protection.

As a consequence, the UK will create 2 new rights which both mirror the UCD right in terms of validity, infringement and term:

  • Continuing Unregistered Design (CUD). The CUD is intended to fill the gap for any loss of protection in the UK for a UCD which existed prior to the transition period and still had some protection period left to run.
  • Supplementary Unregistered Design (SUD). The SUD is intended to replace the UCD going forward for designs disclosed after the transition period.

Action required if you own an existing right: the impact of Brexit on the unregistered design protection regime is more complex than other forms of IP and opens up the possibility of a gap in protection for holders. On this basis, if you believe unregistered design rights are a crucial element of your IP assets then you should immediately contact us to discuss your individual circumstances and receive tailored advice on protection going forward.

Copyright

  • Most UK copyright works will still be protected in the EU and the UK because of the UK’s participation in the international treaties on copyright. The same applies for protection of EU works within the UK.
  • Some elements of UK regulations on copyright are still subject to negotiations on the new relationship between the EU and UK. Depending on the outcome, these regulations may need to be amended in the future.
  • There are some nuanced areas of copyright which may change from 1 January 2021. As such, if you believe you own copyright in relation to any of the following areas you should contact us immediately to discuss your individual circumstances:
    • Satellite broadcasters transmitting copyright works to EEA;
    • Cross-border portability of online content services;
    • Orphan works and cultural heritage institutions; and
    • Collective rights management.

Database Rights

  • UK citizens, residents, and businesses will not be eligible to receive or hold database rights in the EEA for databases created on or after 1 January 2021.
  • UK legislation will be amended so that only UK citizens, residents, and businesses are eligible for database rights in the UK for databases created on or after 1 January 2021.
  • UK owners of databases created on or after 1 January 2021 will need to consider whether they can rely on alternative means of protection in the EEA – for example, licensing agreements or copyright.
  • Database rights that exist in the UK or EEA before 1 January 2021 (whether held by UK or EEA persons or businesses) will continue to exist in the UK and EEA for the rest of their duration. These rights are guaranteed under the Withdrawal Agreement.
  • Copyright protection for databases in the UK and EEA will not change after 1 January 2021.

Action required if you own an existing database right: none at this stage.

Action required if you have plans to create a database on or after 1 January 2021: contact us so we can advise you on alternative approaches to protection in the EEA.

Patents

  • Patents will remain largely unchanged after Brexit.
  • Patents are governed by the UK Intellectual Property Office, the European Patent Office and the Paris Convention. None of these are EU institutions and subsequently Brexit will have no effect on their operation.

Action required: none at this stage.

Your Brexit IP Checklist

Have a question? Contact Matthew

Associated services

Have a question? Contact Matthew

Associated services



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