Effect on IP as Brexit Transition Period Ends

In view of the UK's exit (Brexit) from the European Union (EU), the transition period ends on December 31st, 2020 and the UK becomes an independent territory of the EU since January 1st, 2021. The Brexit transition period ended on 31 December 2020 has marked United Kingdom (UK) way out from the European Union. The effects will be determined by the EU-UK Trade and Cooperation Agreement signed and ratified by the UK parliament in 2020 itself. The piece will discuss the effect it will have on the IP.

For the Patent rights, there will no action be taken whereby the current system of the UK Intellectual Property Office (UKIPO) and the European Patent Office remains unchanged. Marking its way out from the EU, it will have certain changes on trademark and design rights from 1 January 2021. The existing rights in the EU and the protection it provides will no longer be extended to the UK.

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Existing EU Trademark

All existing protections such as EU Trademarks (EUTM), Registered Community Designs (RCDs), Unregistered Community Designs (UCDs), and all such protection which designates the EU will not entail protection in the UK. Nevertheless, the provision relating to IP rights, mentioned in the Withdrawal Agreement will ensure protection beyond the transition period.

The EUTM no longer covering the UK will now have an equivalent comparable trademark in the UK. The existing EUTM and RCD in the EU Intellectual Property Office (EUIPO) database will now be cloned by the UKIPO to create these comparable rights. Any such use of the mark in the UK after the transition period ends will not be taken into account by the EU. These new rights will

  • Be assigned a new unique registration number but not issued a new registration certificate;
  • Be recorded on the UK register and retain the filing dates recorded against the corresponding EU right;
  • Be fully independent UK trademarks and designs which can be enforced, challenged, licensed, or renewed completely separately from the remaining EU right;
  • Require an address for service.
  • The process of creating UK comparable rights is free of charge and owners of EUTMs, RCDs, and international trademark and design registrations covering the EU will not have to take any action.

Pending Trademark and Design Application

In case, there is any pending trademark and design application at the EUIPO and the applicant needs to get it secured in UK, they need to be re-filed with the UKIPO for pursuing UK protection and requiring a UK address for service. For securing the same filing date of the EU application, the applicant has 9 months from the transition period to file in the UKIPO.

On similar lines, the holder of RCD will also have 9 months after the end of the transition period to re-file the application in the UK with a UK address for service to maintain the earlier filing and priority dates of the corresponding EU right. If the RCD has been deferred on 31 December 2020, they will be treated as pending application design. For the UCD rights, this will immediately and automatically be replaced by the UK continuing unregistered design rights.

The exhaustion regime in the EU (including the UK) will not apply to the UK. In that place, the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019 will be applicable. Primarily this exhaustion plays an important role in the parallel trade in the EU. The trade-related aspects want that import and export of the goods across the EU must entail the free-flowing of goods. Therefore such a parallel trade will only occur if those goods have the IP rights being exhausted. The IP owner has consented to exhaust the right and hence the goods have been placed by the permission of the owner. Therefore, this exhaustion of IP rights is very important for the sake of free-flowing trade.

By the end of the transition period, the goods will not be considered as exhausted in the trade for EU if the goods are placed in the UK with the consent of the right holder. Getting the exhaustion benefit, will require the consent of the IP right holder. But this will not apply to the exports being made from the EU to the UK. Meaning thereby, the exports being done for the goods placed onto the market in the EU do not need further permission to export in the UK. But this probably seems to be unfair to those goods which are exported from the UK which are not getting the benefit out of the same. It will be more pertinent to see how the UK government will plan to move ahead with it.

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back Global Patent Filing us at support@globalpatentfiling.com.

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