Intellectual property after Brexit

The United Kingdom ceased to be a member of the European Union on 1 February 2020, and the transition period is drawing to an end on 31 December 2020. What will happen with intellectual property from 1 January 2021? How will trademarks, industrial designs, and patents be registered in the EU and the UK? Will the territorial scope of protection of existing rights change? What about .eu domains held by individuals and companies based in the UK? The changes will impact the operation of businesses currently benefitting from rights awarded across the EU. Now they must adapt to the changes and comply with new obligations.

Below we discuss key IP issues for businesses, governed by the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (signed on 24 January 2020).

EU trademarks and Community designs registered on or before 31 December 2020 at EUIPO (the European Union Intellectual Property Office in Alicante, Spain) will automatically be “copied” into the UK’s register of national trademarks operated by UK IPO (the Intellectual Property Office of the United Kingdom). This applies only to trademarks and designs as to which a registration decision was issued by EUIPO by 31 December 2020. A “comparable registered and enforceable intellectual property right in the United Kingdom” is to be created for each such trademark or design, with a scope covering exclusively the UK. Thus from 1 January 2021 the proprietor will hold two rights: an EU right and a British right. They will cover the same goods and services, and have the same date of filing, priority and registration. For a trademark or design to be “copied” into UK IPO, no applications will have to be filed or additional fees paid.

Nonetheless, the rules for payment for trademarks and designs will change from 1 January 2021. Currently, the proprietor of an EU trademark or Community design has paid a single fee to EUIPO to extend protection through the EU, including the UK. From January 2021, if the proprietor seeks to maintain protection of both trademarks or designs, i.e. EU and UK, it will have to pay two fees—one to EUIPO and one to UK IPO.

Trademarks and designs filed with EUIPO for which the registration is not completed by 31 December 2020 will not be automatically “copied” into the British register. To enjoy protection for such a trademark or design also in the UK, it will be necessary to file an application with UK IPO by 30 September 2021 for rights to the same trademark or design as filed in the EU. The relevant fee will have to be paid and the full registration process will have to be conducted before UK IPO. But following this procedure will allow the proprietor to obtain a British registration with the same filing date and priority date enjoyed by the trademark or design filed with EUIPO.

Rights to trademarks and designs filed with EUIPO from 1 January 2021 will cover only the territory of the EU, which will not include the UK. If the proprietor is interested in protection of a trademark or design in both the EU and the UK, it will have to apply separately for national rights in the UK and EU rights in separate proceedings. It will be necessary to file (and pay for) applications to EUIPO and UK IPO and then, if the applications are granted and two rights are registered, regular fees will have to be paid to both institutions going forward.