2020/09 > Brexit and IP, this is for soon
It will be recalled that the date of Brexit, initially scheduled for 29 March 2019, was postponed a first time to 12 April, then to 31 October and finally to 31 January 2020.
On 1 February 2020 London divorced Brussels after a tumultuous 47 year relationship… and the United Kingdom became a third country relative to the European Union.
It was also from 1 February that the transition period foreseen in the Withdrawal agreement, began to run, ending on 31 December 2020.
These 11 months are immutable, the United Kingdom having formally confirmed in June that the transition period will not be extended. During these months, London and Brussels retain the basic principles of free movement of goods and people. It is also during this period that the future trading relationship between the two parties is supposed to be negotiated.
However, negotiations appear to have reached an impasse. Indeed, more than four years after the referendum in which the British people voted sovereignly in favour of the United Kingdom’s exit from the European Union, London and Brussels still have not found the basis for the new free trade agreement that is due to emerge before the end of this year…or not.
The no-deal scenario is more likely than ever before. The next round of negotiations taking place in London from 7 to 11 September 2020 may prove decisive. If no agreement is reached, from January 2021 on the rules of the World Trade Organization (WTO) will apply to trade relations between the European Union and the United Kingdom. Worse, it may be possible that the British government may go back on the commitments made in the Withdrawal agreement, which could have an impact on the transitional measures that had been taken for industrial property rights.
Trade marks, designs and models
It should be recalled that throughout the transition period the United Kingdom remains subject to European rules. Similarly, European trademarks and Community designs continue to cover the United Kingdom as a territory of the European Union.
On 1 January next, at the end of the transition period, these titles will no longer apply to the United Kingdom with the following main legal repercussions:
- European trade marks and registered or unregistered Community designs will no longer cover the United Kingdom and will therefore be valid only in the remaining 27 Member States.
- The same will apply to international trade marks and designs designating the European Union.
- Spanish law will apply to European Union trade marks as an object of property for right holders having their seat or domicile in the United Kingdom, unless they can prove a real and effective establishment in another Member State. In that case, the law of this latter Member State should prevail.
- For the purpose of maintaining the rights, the use of an European Union trade mark in the United Kingdom will no longer be considered as a use within the European Union.
- Seniority claims of United Kingdom’s national trade marks will no longer have effect in the European Union trade mark.
- Professional representation before the EUIPO becomes mandatory for English nationals.
- Our English colleagues will no longer be able to represent their clients before the EUIPO except under transitional provisions relating to ongoing proceedings.
However, provisions have already been adopted by the United Kingdom to allow the continuation of European trade mark and Community design rights in that territory.
Thus, on 1 January 2021, at the end of the transition period, all European registrations will be automatically converted into United Kingdom national rights without any further examination or fees. The UK national trade marks thus created will cover the same sign, goods and services and will have the same filing or priority date as the original European trade mark. A similar mechanism has been foreseen for Community Designs: the clone thereby created in the UK Register will have the same remaining term of protection and the same filing or priority date. For international trade marks and designs, a UK designation will be created in the international trade mark or design. All these cloned rights will be recognisable by the adding of UK009 (or UK008 for international trade Marks or designs) to their number.
It will obviously be necessary to have all data correctly communicated to the British Office by WIPO and the European Union (more than 1.4 million trade marks and 700,000 designs are concerned).
There will be no specific formalities or fees for right holders. The owners will not be notified by the British Office and will not receive new registration certificates but will be able to access the details of their new rights on the website of the Office.
However, in certain cases, they have the possibility to opt-out of receiving such equivalent rights under terms and conditions that will be possible as of 1 January 2021.
For all pending applications, whether for trade marks or designs, a priority period of 9 months will apply after the end of the transition period, during which the application must be refiled in the United Kingdom upon the payment of fees. They will retain the priority date and seniority of the corresponding EUIPO application but will be subject to examination by the UKPTO (same signs, goods and services). In case of deferment, designs will be considered as pending applications.
As far as unregistered Community designs are concerned, an equivalent design will be created in the United Kingdom for designs already disclosed and an equivalent right has been introduced in British law for future unregistered UK designs for the benefit of UK residents and for designs that will be disclosed for the first time in the United Kingdom.
UKPTO clarifies that the titles thus created will be completely independent from European titles: they can be challenged, assigned, licensed or renewed separately from the original title.
They will have to be renewed upon expiry of the corresponding European right, starting from the deadlines of 1 January 2021, even if the corresponding European right has already been renewed. Given the circumstances, renewal within the grace period will take place without any surcharge from the Office.
Recordals (of licences, etc.) will not be taken into account automatically by the UKPTO except for recordals already published at the EUIPO or WIPO. They will therefore have to be reiterated at the UKPTO.
From 31 December 2020 a period of three years should be granted to right holders to appoint a British representative. However, it is not excluded that the United Kingdom may eventually decide otherwise.
The use of a trade mark within the European Union, even outside the United Kingdom, during the 5 years preceding the end of the transition period will be valid in the United Kingdom, as will the use of a reputation acquired before leaving the European Union. Thereafter, the use and reputation must be effective in the United Kingdom.
Ongoing actions (actions for invalidity, forfeiture, etc.) will only be effective in the United Kingdom if they have become definitive before the exit from the European Union.
Finally, the United Kingdom will no longer be entitled to register or renew .eu domain names. The .eu domain names depending on Nominet, the UK equivalent of AFNIC, will be deactivated at the end of the transition period.
It will also be necessary to make sure that separate applications for customs seizures are filed for UK territory, in order to complete the European applications that may be made.
Some dates and deadlines to remember:
- 31 December 2020: end of the Brexit transition period
- 1 January 2021: Opt-out terms and conditions are available for registered EU trade marks and designs
- 30 September 2021: end of the 9-month priority period for pending EU applications
- 31 December 2023: in theory, end of the period allowed for the appointment of a British representative
We will get back to you shortly to help you regarding practical arrangements for maintaining your rights.