Brexit

Your patents and applications will not be affected by Brexit.

In particular, European applications/patents are unaffected.  The European Patent Convention (EPC) provides the legal framework for European patents and applications. This is an international treaty which is administered by the European Patent Office (EPO). Both the EPC and the EPO are completely independent of the EU. The EPC already has non-EU signatories and the UK will remain a contracting state of the EPC even after the UK leaves the EU. This means that the UK can still be designated and European patent attorneys based in the UK will continue to have the right to represent their clients before the EPO.

•  There will be no change to SPC legislation in the UK until the end of the transition period (31 December 2020).  On 1 January 2021, new regulations will come into effect in the UK.  These will bring current EU legislation relating to SPCs into UK law as far as possible.

•  If you already have a granted SPC no action is required.  It will remain in effect after 31 December 2020.

•  If you have a pending SPC application no action is required.  It will continue to progress and will be examined under the current SPC framework.  Any SPC which is granted based on such an application will provide the same protection as existing SPCs.

•  If you file an SPC application after 31 December 2020 you will need a relevant marketing authorisation which allows the product to be sold in the UK.  Authorisations from the European Medicines Agency will be converted into equivalent UK authorisations on 1 January 2021.

•  SPC applications filed after the end of the transition period will get the same term of protection as if filed before.  This will still be calculated based on the first authorisation to place the product on the market in either the UK or the EEA.

If you are party to any agreements (e.g. distributor agreements, assignments, licences or consents) where the territorial scope, jurisdiction and/or governing law are defined by reference to the “European Union”, you need to think about whether these agreements need amending, or whether new agreements need to be drawn up, in order to ensure that they accurately reflect the original intention of the parties.

IP rights that were exhausted both in the EU and in the UK before the end of the transition period shall remain exhausted both in the EU and in the UK following Brexit.  This means that where an IP rights owner had, prior to Brexit, lost its right to control the distribution and resale of its goods that had already been placed on the market within the EEA by the rights holder or with the rights holder’s consent, the UK will continue to recognise the exhaustion of that right.

Yes. UK applicants can still apply for protection in the EU through EUTMs or RCDs (via the EUIPO and under the Madrid/Hague Agreements) in the usual manner, and Dehns is able to assist every step of the way.

No. Any EUTM or RCD (including an International Trade Mark or Design Registration protected in the EU), that was registered or protected before or on 31 December 2020 (“exit day”), has been automatically cloned to create a comparable national UK right, with the same filing date and, if appropriate, priority/seniority dates as the EU registration/designation. This was done at no cost to the EUTM/RCD owner.

A comparable UK right derived from an EUTM or EU designation of an International Registration (IR) has the same renewal date as the EUTM/IR, except where the EU was the subject of a subsequent designation of an IR, in which case the UK renewal date is calculated on the basis of the date of the subsequent designation.

A comparable UK right derived from an RCD or an International Design Registration always has the same renewal date as the RCD/International Design Registration.

Dehns is, of course, able to handle any new UK rights arising out of this cloning process, through our UK offices.

In certain circumstances, holders of EUTMs and RCDs may opt-out of the protection afforded by a UK comparable right, by filing the appropriate form with the UK IPO. However, this is not possible if:

• the comparable UK right is subject to an assignment, licence, security interest or other agreement; or
• there are pending proceedings based on the comparable UK right.

In addition, in the case of trade marks, opting-out is not possible where the comparable UK right has been put to use in the UK.

Existing registered EUTMs or RCDs continue to be valid in the remaining 27 EU countries (“the EU27”).

The owner of any EUTM or RCD application (including an International Trade Mark or Design Registration designating the EU) that was pending on 31 December 2020, had until 30 September 2021 to file a new UK application corresponding to the EUTM/RCD. Rights under any new UK trade mark applications filed by this date were effectively backdated to the filing date of the original EUTM application or designation, and also retained any priority/seniority dates claimed under the EUTM application/designation. A UK Registered Design application filed by 30 September 2021 under these provisions was allocated the same fling and priority date(s) as the corresponding RCD application or EU designation of an International Design Registration.

For the purposes of the remaining EU countries, any EUTM or RCD applications (or EU designations of International Trade Mark or Design Registrations) that were pending on 31 December 2020 progressed in the normal manner and, assuming they achieved registration, confer protection in the EU27.

If your EUTM or RCD expired in the 6 month period from 30 June 2020 to 31 December 2020, and is still within the 6 month grace period during which late renewal is possible, a comparable UK right will have been created. The comparable UK right will hold an ‘expired’ status, and its continued effect in the UK will be dependent on the late renewal of the corresponding EUTM/RCD. If the EUTM/RCD is late-renewed during the 6-month grace period, the comparable UK right will be automatically renewed. No separate UK renewal fees will be payable.

Where an EUTM or RCD falls due for renewal on or after 1 January 2021 the EUTM/RCD and the comparable UK right that has been created will have to be renewed separately (assuming both are to be maintained).

No. All unregistered EU Design rights existing on exit day automatically continue to be protected and enforceable in the UK for the remainder of the duration of the right, due to the automatic creation of an equivalent UK right.

The UK government has also introduced protection in the UK for new unregistered designs, which is equivalent to that previously provided by Unregistered EU Design rights, by virtue of a new Supplementary Unregistered Design (SUD) Right.

Since 1 January 2021, it has no longer been possible to use UK rights as a basis for opposing or seeking to invalidate an EUTM.

Any EUTM oppositions or invalidity actions that were pending before the EUIPO on 31 December 2020 and were based solely on a UK right (or UK rights), have been dismissed. To the extent that any such actions included grounds based on rights in one or more EU27 country, these continued as normal.

That depends on what type of action it is.

Where an EUTM registration was subject to a Cancellation or Invalidity action that was still ongoing before the EUIPO on 31 December 2020, a new UK comparable right will have been automatically created, but the final decision in the EUIPO action will affect the new UK right as well, unless the grounds for cancellation or invalidity do not apply in the UK. For example, a successful invalidity action against an EUTM registration based solely on earlier DE rights would not result in the UK comparable registration being cancelled, whereas a successful non-use cancellation action against an EUTM registration would result in the UK registration also being cancelled.

Where an EUTM application is subject to an Opposition that was pending on 31 December 2020, the outcome will not affect any comparable UK application that was filed during the 9-month period between 1 January and 30 September 2021.

UK Oppositions or Invalidity Actions that were ongoing on 31 December 2020 and based on EUTMs have continued as normal and either have been, or will be, decided on the basis of the law as at 31 December 2020.

In the case of an Opposition, it depends when the application you wish to oppose was filed. If the application was filed on or before 31 December 2020, you can only rely on your earlier rights as they were as at 31 December 2020. This means that, where an EUTM has since been cloned to create a comparable UK Right, you can only rely on the EUTM. If, on the other hand, you are opposing an application that was filed on or after 1 January 20211, you cannot rely on an earlier EUTM or EU designation, and must instead rely on your comparable UK right(s). For any UK invalidation action launched on or after 1 January 2021, you may not rely on an earlier EUTM registration/designation, and must instead rely on the comparable UK right(s).

A licence of a registered EU right that applied to the UK prior to 1 January 2021 continues to apply to the UK with respect to the comparable UK right under the same terms, subject to any modifications that might be required for their application in the UK.

However, registrable transactions that were recorded against an EUTM or RCD as at 31 December 2020 have not been automatically recorded against the comparable UK registration. Therefore, where a licence or security interest has been recorded on the EUTM or RCD register, and subject to any contractual provisions to the contrary, the transaction may need to be re-recorded against the comparable UK registration.

Where Dehns is aware that a registrable transaction has been recorded against an EUTM or RCD on our books, your attorney will already have been in touch to discuss this with you.

Use of an EUTM in the UK (including for export purposes) before 1 January 2021 does constitute use “in the European Union” for the purpose of maintaining the rights conferred by the EUTM, but only where, and insofar as, such use relates to the relevant period for which use has to be shown. This means that use in the UK will, in due course, cease to constitute genuine use for the purposes of maintaining an EUTM.

Use of a comparable UK right in the EU (whether in the UK or not) prior to 1 January 2021 does count as use of the comparable UK right. Where the 5-year non-use period includes time before 1 January 2021, use in the EU will be considered. Where the 5-year non-use period includes any time after 1 January 2021, use outside of the UK within that period will not be taken into account, and use of the mark in the UK must also be shown.

An owner of a .eu domain name must be a citizen or resident of, or have an establishment in, the EU. Following the expiry of the Brexit transition period on 31st December 2020, EURid (the registry manager of .eu domain names) suspended all .eu domain names owned by UK citizens or entities. If, by 31 March 2021, the owner of a suspended .eu domain name had not updated its contact data at EURid to demonstrate compliance with the above criteria, the status of the domain name was changed to “withdrawn”. On 1 January 2022, all withdrawn .eu domain names will be revoked and subsequently become available for general registration. Until that point, it remains possible to update owner details.

If you are party to any contracts/agreements (e.g. distributor agreements, assignments, licences or consents) where the territorial scope, jurisdiction and/or governing law are defined by reference to the “European Union”, you should, if you have not already done so, consider whether these agreements need amending, or whether new agreements need to be drawn up, in order to ensure that they accurately reflect the original intention of the parties. If there is doubt as to the territorial scope of an Agreement following the UK’s departure from the EU, you should seek legal advice as soon as possible.

Agreements such as co-existence agreements and licences, which covered EUTMs or RCDs, are, in the absence of evidence that said documents were not intended to have effect in the UK, deemed to cover the comparable UK rights. This means that if, for example, the owner of an EUTM/RCD had, prior to 1 January 2021, consented to you doing something in the UK, they will not now be able to bring an infringement action against you based on the comparable UK right.

As of 1 January 2021:

• An existing AFA covering the UK and filed via UK Customs will remain in place until the AFA expires.
• an existing Union AFA covering the UK that was filed via the Customs office of one of the EU27 is no longer valid in the UK, so a new UK AFA should be filed via UK Customs if you wish UK Customs to take action in relation to goods that are suspected of infringing your IP rights.
• an existing Union AFA previously filed via UK Customs is no valid in the EU27. Should you wish your rights to be enforced by Customs in some or all of the EU27, you will need to file a new Union AFA via Customs in one of the EU27.
• an existing Union AFA submitted to Customs in one of the EU27 countries remains valid in the EU27, whether or not the UK was originally covered.

Any IP rights holders who wish their rights to be enforced by Customs in the UK and EU must file two separate AFAs – a UK AFA filed via UK Customs and a Union AFA filed via the Customs office of one of the EU27 countries or via the EUIPO’s IP Enforcement Portal.