What effect will BREXIT have on your trademark and design rights?

The transition period for the United Kingdom’s withdrawal from the European Union expires on 31 December 2020.
Until now the UK has been an integrated part of the EU, but that will no longer be the case from 1 January 2021. This will lead to several changes for your existing IP rights and gives cause for new considerations.

Registered EU trademarks will at the end of the year be divided into a continuing EU registration and a comparable national UK registration. This will happen automatically and at no expense to the trademark owners. Renewal of EU trademark registrations, with a renewal date in 2020, will also have effect in the comparable national UK registration. After 1 January 2021 the comparable UK trademark registration will be subject to UK regulations and future renewals and proprietor changes must be registered with the national trademark authority.

For EU trademark applications, which are still awaiting registration on 31 December 2020, the applicant may apply for a comparable registration in the UK within nine months and on payment of a national application fee. In such a comparable national application, the EU application date will be retained.

For new registration initiatives it has for some time been our recommendation, and will also be so in the future, to include the UK separately in an international trademark registration.

The procedure for pending and registered EU designs are the same as for EU trademarks. That means that for existing EU design registrations a comparable UK registration will be created automatically, while for pending EU design applications it will be possible to apply for a comparable UK application within nine months and on payment of a national application fee.

Unregistered EU design
With the prospect of a “hard” BREXIT there will be substantial changes in the protection of unregistered design rights.

Until now an unregistered design has benefitted from protection in the EU, including the UK, for three years after the first publication of the design outside the EU.

Unregistered designs, which already benefits from protection according to the existing EU rules, will also after 1 January 2021 be protected in the UK until the end of the three-year period.

From 1 January 2021 the UK will establish a similar independent three-year protection of unregistered designs, and unregistered designs will only benefit from protection in the UK, if the first publication has been made within the UK. Publication within the EU will therefore be detrimental to the novelty of an unregistered design in the UK, just as publication in the UK will be detrimental to the novelty of an unregistered design in the EU.

If you want to take advantage of the option of an unregistered design right in the future, it will, in other words, be important to carefully consider the place for the first public presentation of the design.

The UK is also continuing its existing rules for unregistered design rights, which provides for protection of an unregistered design right for 10 years after first sale in the UK or for 15 years after creation, but after 1 January 2021 these rules will only apply to individuals domiciled in the UK or businesses incorporated in the UK.

The EU has issued several directives and regulations on copyright. From 1 January 2021 the UK will no longer be subject to these rules. Most of the rules, however, have continually been implemented in national UK legislation and will therefore continue to apply.

The EU Court of Justice has been a significant factor in the development of the legal position through several rulings with major impact in this area. This case law will from the end of the year no longer bind the UK, and it is to be expected that the UK courts will deliver judgments which may deviate from the EU harmonized position. The legal basis for copyright protection in the UK may therefore change with time.

The European patent system will not be affected by BREXIT since this system did not originate within the EU. The European patent system is based on the European Patent Convention, which was signed by the European countries, including the UK.

The UK has announced that, following BREXIT, it no longer wishes to be part of the EU Patent Court, known as “the Unified Patent Court”. It is now unlikely that the Court will be realized, particularly since the German Constitutional Court also found the EU Patent Court to be unconstitutional.

The implications of BREXIT on ongoing proceedings

It is uncertain whether the EU trademark and design courts will continue to have jurisdiction in the UK after 1 January 2021, even if a court case or infringement case has been brought on before 31 December 2020. It is, however, certain that decisions and rulings given by a competent EU trademark or design court before 31 December 2020 also will be enforceable in the UK after 1 January 2021. It should therefore be considered whether possible proceedings should be commenced and accelerated before the end of the year, since you may otherwise have to enforce your rights in the UK, which is traditionally one of the most expensive countries for enforcing rights.

Løje IP is prepared for the UK’s final withdrawal from the EU and ready to help you and your business to achieve the best utilization of your IP rights – both in Denmark, the EU and the United Kingdom.