Intellectual property after 1 January 2021
Now that the Transition Period has ended, there are significant changes to the ways in which intellectual property law will operate from 1 January 2021.
From 1 January 2021, UK lawyers will no longer be able to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO). UK intellectual property owners should now appoint an EEA attorney to represent them on any new applications or proceedings before the EUIPO.
Nevertheless, under the Withdrawal Agreement (WA), UK legal representatives can continue to represent clients before the EUIPO in ongoing cases initiated before the end of the Transition Period.
Changes to IP rights
Trade marks and design rights
On 1 January 2021, under the terms of the WA, the IPO created a comparable UK trade mark for every registered EU trade mark (EUTM), and a re-registered design for every Registered Community Design (RCD). In each case, these rights will:
- be recorded in the UK trade mark/designs register
- have the same legal status as if they had been applied for and registered under UK law
- keep the original EUTM/RCD filing date
- keep the original priority date (or UK seniority dates)
- be a fully independent UK trade mark/design that can be challenged, assigned, licensed, or renewed separately from the original EUTM/RCD application.
There is no requirement to file an application or pay an application fee for this comparable right. No UK registration certificate is provided to the owner. However, the owner can access details about the trade mark/design on the government website and can take a screenshot as evidence of the right.
Any business that had an application for an EUTM or RCD not registered before the end of the Transition Period (or have deferred publication at the end of the Transition Period) have 9 months to apply in the UK for the same protection. In this case, UK application fees will be payable and the application will be subject to UK examination requirements.
International trade marks and designs
International designs designating the EU also continue to have protection in the UK under the WA. On 1 January 2021, the IPO created a re-registered UK design for every international design (EU).
As with trade marks and designs, if an international design designating the EU has been applied for but is not yet protected (or it has been deferred), the holder has 9 months to apply for the same right as a UK design. UK fees and examinations requirements will also apply to such applications.
Unregistered community designs that arose before the end of the Transition Period, will continue to be protected in the UK for the remainder of their three-year term.
From 1 January 2021, a supplementary unregistered design (SUD) is available in UK law, which confers similar protection as an unregistered community design, but only for the UK. This will establish first disclosure in the UK (or another qualifying country). Significantly, first disclosure in the EU will not establish a SUD right and could destroy the novelty of the design should the holder subsequently seek to establish UK unregistered rights.
Businesses will therefore need to consider where to disclose their products to ensure they have adequate protection in their most important market.
The European patent system is unaffected by the end of the Transition Period, as the European Patent Office (EPO) is not an EU agency. Existing European patents covering the UK will therefore be unaffected and European patent attorneys based in the UK can continue to represent applicants before the EPO.
Supplementary Protection Certificates (SPCs)
SPCs are granted as national rather than EU-wide rights and there was consequently no need for the UK and EU to agree a comparable right ensuring the continued protection of SPCs in the UK. SPC applications pending at the end of the Transition Period will be examined under the current framework and new applications can be made by submitting an application to the IPO.
However, businesses will need to check whether their marketing authorisation is valid for the whole UK, or just Northern Ireland or Great Britain.
Most UK and EU copyright works (including books, films and music) will still be protected in the EU and UK, because of the UK’s continued participation in the international treaties on copyright.
However, current cross-border copyright arrangements unique to EU member states, such as copyright clearance for satellite broadcasts, have stopped.
Geographical Indications (GIs)
A GI is an IP right used on products that possess qualities or a reputation due to a geographical origin. The IPO has worked with Defra (The Department for Environment, Food and Rural Affairs) to ensure that new UK GI schemes, which came into force on 1 January 2021, are compatible with the wider IP framework, ensuring that the existing relationship between trade marks and GIs is maintained.
More information on the new UK GI schemes can be found here.
Parallel trade between the UK and EEA
While parallel imports into the UK from the EEA will remain unaffected, businesses parallel exporting IP-protected goods from the UK to the EEA may need the right holder’s consent, as IP rights in goods placed on the UK market by or with the consent of the right holder after the Transition Period may no longer be considered exhausted in the EEA.
The government plans to publish a formal consultation in early 2021.
IP rights at the UK border
From 1 January 2021, all UK protection within the EU will cease to be recognised, meaning that:
- businesses will need to hold an Application for Action (AFA) in both the UK and EU, in order to protect their IP rights in both jurisdictions. The form can be found here.
- businesses that have made an application to the UK for IP rights protection in EU countries should check the EU EUROPA website for guidance on protecting IP rights in multiple EU member states
- where a business made an application in another EU country for IP protection in the UK before the end of the Transition Period, they should make a new AFA application to protect the right at the UK border
- The government will recognise existing applications for IP protection in the UK where it was handled by HMRC Intellectual Property Approvals. Businesses can continue to seek enforcement in the UK until their AFA expires.