On 24 December 2020, the negotiators of the European Union (‘EU’) and the United Kingdom (‘UK’) reached a Brexit deal containing the new rules that will apply between the EU and the UK from 1 January 2021. Although the European Parliament has yet to give its final approval to the Trade and Cooperation Agreement, the new rules will be applied provisionally from 1 January 2021 with the consent of the European Parliament.
Registered EU trademarks
For EU trademarks already registered on 31 December 2020, a comparable replacement UK trademark will be automatically created by the UK Intellectual Property Office (‘IPO’) on 1 January 2021 without additional payment. This national trademark will retain the dates (such as registration and priority date) of the original EU trademark. The UK trademark is independent and can be challenged or renewed separately from the original EU trademark.
EU trademark holders who do not wish to obtain a UK trademark have the option of opting out. That possibility expires once the holder has used the UK trademark. Use occurs, for example, if the holder has transferred the UK trademark or if the UK trademark is involved in legal proceedings.
EU trademarks applied for
Applicants for a EU trademark which was not registered by 31 December 2020 have the option to apply for a UK trademark with the dates (such as filing and priority date) of the original EU trademark application. This can be done until 1 October 2021.
The condition is that the application for the UK trademark covers goods and services similar to the EU trademark originally applied for. On its website, the UK government warns of the risk of trademark hijacking if this is not complied with: another party may then file a UK trademark application that is similar to the original EU trademark application and thus hijack the UK trademark with priority date.
The application for a UK trademark is subject to the admission requirements of the UK IPO. A separate UK application fee is also due.
If a EU trademark has not been put to genuine use in the protected territory (i.e. the EU) in the last five years, a cancellation action can be brought. A similar arrangement exists in the UK.
A EU trademark does not have to be used in all EU member states in order to meet the requirement of genuine use. It may therefore be the case that the original EU trademark has not been used in the UK. This could lead to undesirable and unintended results for the UK trademark created on 1 January 2021. After all, strictly speaking, it has then not been put to genuine use in the protected territory (i.e. the UK) in the past five years. To resolve this, the EU and the UK have agreed that use of the EU trademark before 1 January 2021 will be deemed to be genuine use of the created UK trademark, regardless of whether such use took place inside or outside the UK.
Registered Community designs
Community designs which were already registered on 31 December 2020 are subject to a similar regime as EU trademark holders. For example, the automatically created UK design retains the original dates (such as registration and priority date) of the Community design, and the holder of a Community design may also refrain from obtaining a UK design.
Under UK domestic law, the holder of a design must be resident or incorporated in the UK. It is currently unclear whether this also applies to holders of a UK design created in connection with the Brexit.
Community designs applied for or not yet published
Applicants for a Community design which was not registered by 31 December 2020, will have the opportunity to apply for a UK design until 1 October 2021, similarly to applicants for a EU trademark. The condition is that the application must be for the same design as originally applied for in the EU.
For a Community design, the publication may be suspended for a maximum period of thirty months from the date of application. For a UK design, this is a period of up to twelve months. This also applies to a UK model created as of 1 January 2021 as part of the Brexit.
Unregistered Community designs
In the EU, a design may also be protected as a so-called unregistered Community design. Protection is then obtained without registration for the period of three years after the design was first made available to the public within the EU. A Community design which has already obtained protection in this way before 1 January 2021 shall retain its protection as an unregistered design in the UK for the remainder of the three-year period.
From 1 January 2021, the UK will also introduce a similar unregistered design right into its national legislation.
Plant variety rights
Holders and applicants for European plant variety rights shall be subject to rules similar to those applicable to the EU trademark and the Community design.
However, for applicants for a European plant variety right not registered by 31 December 2020, the possibility to apply for a UK plant variety right exists only until 1 July 2021.
The Brexit will not affect European patents filed or granted with the European Patent Office.
European patents are characterised by a central application procedure through the European Patent Office. After grant, the patent is split into national patents and can be registered in countries that are members of the European Patent Convention. Unlike its name suggests, the European Patent Convention is international and independent of the EU. The UK now participates in the European Patent Convention as a non-EU country, as do, for example, Switzerland, Norway and Turkey.
The UK will not participate in the unitary patent that is yet to become available and that will at once provide protection in almost the entire EU. Litigation on the unitary patent will in the future be centralised at a court for the whole of Europe: the Unified Patent Court (‘UPC’). The UPC will then also apply European law, which for the UK is not compatible with its withdrawal from the EU.
The European Copyright Directives had already been implemented in UK domestic law. For the time being, the UK also continues to participate in the international copyright treaties. It is expected that the national law of the UK will eventually deviate from the copyright law in the EU, among others because the national courts of the UK may start to give their own, national interpretations to the rules.
As of 1 January 2021, European Regulation 2017/1128 ‘on cross-border portability of online content services in the internal market’ no longer applies to the UK. This means that consumers from the UK may on the basis of copyrights be restricted in their use of streaming services (such as Spotify and Netflix) when they visit the EU, and vice versa.
The European Database Directive has also been implemented in UK national law. As with copyrights, the national courts of the UK may begin to interpret the rules in their own way.
Database rights that originated in the EU or UK before 1 January 2021 will continue to exist in the EU and UK for the rest of their term.
The above may affect agreements such as licenses, R&D agreements, cooperation agreements and distribution agreements involving intellectual property rights.