BREXIT – Implications for Patents, Trademarks and Designs

A Detailed Guide (BREXIT Deal and No-Deal, December 2019)

This article provides comprehensive information on the subject of intellectual property rights in BREXIT and is regularly updated.

What happens to your patents, trademarks and designs after the BREXIT – if there is a deal with the EU and if there is no deal with the EU?

Have you ever wondered whether you need to take action on your patents, trademarks and designs because of the UK’s withdrawal from the EU? The deal may seem like it’s in the bag in the UK. However, the EU would still have to give its consent and that consent is still pending.

After 31 January 2020, EU Trademarks and Community Designs no longer have any effect in the UK. In contrast, little will change for European patents.

I will start with patents, which is probably the easiest thing to do. Then I will say something about trademarks. Finally, I will deal with the most dangerous subject (hint: novelty), namely designs.

First of all, of course, it is clear that the United Kingdom will remain a member of practically all the important treaties in the field of industrial property such as the TRIPS Agreement, the Paris Convention (Paris Convention), etc. Under the TRIPS Agreement, Great Britain has committed itself to grant patent protection, trademark protection and design protection for a certain period of time. Since Great Britain has co-registered instruments such as Community Designs or Union Trademarks, Great Britain is obliged to maintain this protection in Great Britain even after leaving the EU. Great Britain must therefore create a possibility for industrial property rights such as Community Designs or Union Trademarks to continue to have effect in some form after BREXIT. Otherwise, Great Britain would in all probability be in breach of the TRIPS Agreement.

At the moment, there are two possibilities: either an agreement between the EU and Great Britain can be reached or no agreement can be reached. Both the EU and the UK government have already warned IPR holders that it is now not unlikely that no agreement – i.e. a hard BREXIT – will be reached. The Institute for Government has designed a vivid infographics which illustrates well why this is the case. After the turbulent votes in the British Parliament in recent months, we believe that it is now somewhat more likely that there will be an orderly exit from the EU.

In the event that there is still an agreement with the EU, a transitional phase is likely to last until 9 months after BREXIT, during which time the UK will de facto continue to be part of the system of Union Trademarks and Community designs. In this case, Union Trademarks and Community Designs applied for will probably be registered as national trademarks in Great Britain until 9 months after BREXIT, without losing their seniority. On March 19, 2018, a draft agreement between the EU and Great Britain was published by the EU. Articles 50 et seq. of this agreement propose basic regulations on property rights. In October the Daily Mail published the full text of PM Johnson’s “new deal” on 17 October 2019. This new deal has probably already been approved by the EU negotiators. However, final approval by the EU heads of government is still pending.

Great Britain has been publishing guidelines for the case of a hard BREXIT since the end of August 2018. In September 2018 “Technical Notices” on industrial property rights were published by the UKIPO. The UKIPO has summarized and linked these on a website last amended on October 10, 2019.

I will therefore always consider both scenarios in the following.

European patents after BREXIT

Great Britain is a member of the European Patent Convention, which is not limited to the EU, but also has many non-EU members such as Switzerland, Turkey, Iceland and Norway. Great Britain will continue to be a member of this agreement. It will still be possible to apply for a European patent and then validate it in the UK.

The UKIPO has also published a very useful video:

The UK also ratified the UPC Agreement on April 26, 2018. Germany has not yet ratified this agreement to the Unified Patent Court and the decision on the constitutional appeal, which just prevents ratification, is not expected until 2020 (file number 2 BvR 739/17). However, Great Britain intends to remain part of the unified patent system, as also stated in a white paper of the British government from July 2018. This would mean considerable added value for patent holders. However, it is currently still unclear how this could be realised.

Supplementary protection certificates that exist prior to BREXIT will continue to be effective. After BREXIT, supplementary protection certificates can be applied for in the remaining EU countries. Great Britain is also planning to establish a supplementary protection certificate for the period after BREXIT. The fate of SPCs currently being applied for does not yet appear to have been finally clarified. However, applicants can apparently assume that they will be able to continue the application in Great Britain after BREXIT. Current developments in this regard can be found on the UKIPO website on SPCs.

EU Trademarks after BREXIT

EU Trademarks only have effect in the EU and will therefore lose their effect in Great Britain with the BREXIT.

The Parliamentary Under-Secretary of State for Exiting the European Union Robin Walker has, however, said in a debate on 19 July 2018 that the conversion of EU Trademarks and Community Designs into British trademarks and designs will be free and automatic. Shortly afterwards he made it clear that only in the event of a successful agreement would the conversion be automatic and free of charge. Whether this would also apply in the case where there was no agreement between Britain and the EU was left open at that time.

The UKIPO has now clarified, however, that registered EU Trademarks or International Registrations with EU designations will in any case be converted automatically and free of charge into British national trademarks which also inherit priority and seniority data of EU trademark rights.

For EU Trademark applications or International Registrations with designations of the EU which are not yet registered at the time of BREXIT, it will be possible within a transitional period of 9 months to apply for a national British trademark claiming the seniority of EU trademark rights.

The automatically created national British trademarks will receive a registration number consisting of the prefix “UK009” followed by the last 8 digits of the EU trademark number.

The UKIPO has provided a very useful video on EU Trademarks:

It virtually eliminates the possibility that owners of Union trademarks will lose their trademark rights in Great Britain after BREXIT.

The EUIPO has clarified that representatives from Great Britain in the case of a hard BREXIT will be deleted with immediate effect as representatives in all property rights and proceedings. As we believe that a hard BREXIT without an agreement with the EU cannot be excluded, you should appoint a new representative within the EU for your trademark rights as soon as possible, provided that you are currently working with a representative from Great Britain for your EU trademark rights. The EUIPO will usually not inform the trademark owners about the loss of the representative.

Our recommendation is therefore to wait for the BREXIT in any case. After the BREXIT there will then automatically be national UK trademarks for registered EU trademark rights. For applications still pending, UK trademarks with the seniority of the original application can be applied for within 9 months. Already now you should appoint a new representative of your EU trademark rights within the EU, provided that you had previously elected a representative from Great Britain. We are at your disposal.

For the newly created British trademarks, separate fees for the renewal of the trademarks must of course be paid. If the new trademark expires before 6 months after the BREXIT, the UKIPO will inform the representatives or applicants about the expiry. The renewal fees can then still be paid within 6 months from the date of dispatch of the UKIPO notification without surcharge.

If the due date of the renewal fee was prior to the date of the BREXIT and the applicant has not renewed the mark by the BREXIT, the resulting British trademark will be automatically renewed if the EU Trademark is renewed within the surcharge period.

There are a few more things that should be considered:

As of the BREXIT, use of EU Trademarks in Great Britain no longer counts as use of a EU Trademark that preserves rights.

English remains one of the official languages at EUIPO and can be chosen as the language of proceedings, as English is the official language in Ireland and Malta.

In contrast to priority, under the BREXIT a seniority from a British trademark can no longer be claimed for EU Trademarks.

An even more detailed communication from UKIPO can be found on their website.

Designs After the BREXIT

The problem with registered designs is that they must be new at the date of filing. If, therefore, holders of Community designs would not be able to obtain design protection in the United Kingdom under the BREXIT system, then, unlike with trade marks, they would not be able to simply re-register the designs in the United Kingdom. However, this is very unlikely.

The UKIPO has now assured that there is in principle the same solution for designs as for trademarks:

Registered designs with effect in the EU (i.e. Community Designs or Hague Designs designating the EU) will automatically and free of charge lead to UK design rights. The registration number of the resulting UK designs will be the same as the EU registration number, preceded by a 9.

The arrangements for renewal fees will be the same as the above arrangements for EU trade marks.

Applications for EU design rights which have not yet resulted in registration may be filed as British designs within 9 months of the BREXIT, claiming the seniority of the original application.

EU Community designs with deferred publication are treated as applications (not as registered designs).

The UKIPO has also provided a video on design rights:

Unregistered Community designs should also be convertible into unregistered designs in the UK (Art. 53). An unregistered community design will automatically become a UK Continuing Unregistered Design (CUD). For unregistered design rights that arise after BREXIT, there will be the national property right of the UK Unregistered Design Right.

The UKIPO has made a video available for this purpose:

I therefore consider it highly unlikely that there will be any loss of design rights in the case of designs.

The UK is a member of the Hague Agreement. So if you are seeking protection in the EU, Switzerland, Great Britain or other countries, for example, it may be best to apply for a so-called Hague Design.

We are at your disposal for the protection of designs in Great Britain.

A detailed article on designs according to BREXIT can also be found on the UKIPO website.

Jurisdiction

EU-wide court decisions will no longer be enforceable in Great Britain from the BREXIT onwards.

From the BREXIT onwards, courts in Great Britain will not be able to make any decisions based on EU Trademarks or on the validity or enforceability of EU Trademarks.

Claimants and defendants should take this into account accordingly. This should also be taken into account when drafting license agreements.

Summary and recommendations for action

BREXIT seems to have practically no negative effects on patents. It is not yet certain whether Great Britain will also remain part of the unified patent system.

As far as EU Trademarks and Community Designs are concerned, it appears that the registered EU property rights will lead to corresponding British property rights free of charge and automatically even in the case of a hard BREXIT. Applications for these protective rights can be filed within 9 months as British trademarks or designs, claiming the seniority of the original protective rights.

However, you should appoint a new representative within the EU for your EU property rights if you are currently represented by a British representative.

If you wish to register trademarks or designs in Great Britain just to be safe or if you have any other questions about BREXIT and your industrial property rights, please do not hesitate to contact us via email or phone.

We will be happy to answer any questions you may have at any time.

Rolf Claessen