There has long been talk of the UK’s decision not to be part of the European Union anymore, especially the practical consequences of BREXIT, including regarding Intellectual Property Rights arising from existing registrations, requests in progress and, of course, future requests that will be submitted to the European Office by the end of the transition period (31 December 2020).
With the formalization of BREXIT on January 31, 2020, the Intellectual Property Office of the United Kingdom (UKIPO – Intellectual Property Office of the United Kingdom) disclosed the form and transition rules related to Intellectual Property Rights.
From that moment on, the so-called transition period will begin, which will remain in effect until December 31, 2020. In this first moment, no drastic changes will be made, allowing the adaptation of the holders of Intellectual Property rights to the English law, as well as to organize their records and measures, such as requesting extensions or five-year periods.
During the transition period, all registrations, whether of trademarks, patents, international design registrations, registered European / Community designs and copyright, will be protected both within the European conglomerate and in the United Kingdom.
However, the big question is the changes that will occur after January 1, 2021, when the transition period will be over and UKIPO will act completely unrelated to European intellectual property protection systems.
In brief, the main initial changes will be exposed here, according to information published by UKIPO .
Patents, International design registrations, registered European / Community designs and Copyright:
Patents will not be affected by BREXIT. This is because its processing is done by the European Patent Office (EPO), which is not an agency directly linked to the European Union. Therefore, the withdrawal of the United Kingdom from the conglomerate, in no way affects the protection of patents already granted and applications in progress will follow their normal procedure and no action will be necessary.
International design registries follow the guidelines of the international Hague treaty, which is managed by the World Intellectual Property Organization (WIPO). Even with the withdrawal agreement, the UK will continue to maintain its relationship with WIPO and, consequently, ensure continued protection of registrations and applications for registration.
Regarding registered community designs, better known as RCD – Registered Community Design , which are handled by the EUIPO ( European Union Intellectual Property Office ), they will continue to follow the same procedure without changes during the transition period.
As of January 1, 2021, UKIPO will create “comparative designs” that will be copies of design records protected by EUIPO, a kind of cloning of the EUIPO database. For registration applications that are pending after the end of the transition period, the depositor will have 9 months to apply for registration in the United Kingdom and maintain the filing date of the previous application required at EUIPO.
Finally, as with patent protection procedures, copyright is also not governed by specific European Union legislation, but by international treaties and cross-border treaties.
When copyright has its protection fully linked to an international treaty, nothing will change with the signing of BREXIT, since copyrights that depend on cross-border treaties will be valid in English until the end of the transition period.
After January 1, 2021, the latter will have to be renegotiated and may be modified or terminated during this process.
Brands:
The intellectual property rights that will be most impacted by BREXIT, after the transition period, are the trademarks. We will summarize some of the main changes below.
As of January 1, 2020, European trademark registrations filed with EUIPO will not protect the trademark in the United Kingdom, and new registration applications must be filed directly with UKIPO for the registration to be effective in the United Kingdom.
After the transition period, UKIPO will automatically create so-called “compared brands”, such marks will be exact replicas of the registrations granted by EUIPO during or before the transition period.
Thus they will have the same deposit date, consequently the grant and validity date, the same priority so that it will not be necessary to make any priority requests, + alternative registration requests after the transition or even any payment.
However, UKIPO will not issue a new registration certificate, but all registration data will be available on the UKIPO website.
It is important to note that as of January 1, 2021, the original numbering of the record will appear with the prefix UK009 and the number used by EUIPO shortly thereafter, as a way of differentiating the records in force in the United Kingdom.
After registration, the next step that deserves attention is when talking about the trademark extension protocol, since from the end of the transition period, two different extension requests should be made.
The first application must be made before EUIPO for the registration of the European trademark to be extended; and another directly before UKIPO, so that the “cloned” registration is also extended, as it will be a separate and autonomous registration in relation to the European trademark registration.
After granting or extending the registration of trademarks with UKIPO, the right holder will receive a specific Certificate for the United Kingdom, issued by UKIPO itself.
It is important to note that only European trademark registrations granted before January 1, 2021 will be automatically cloned by UKIPO.
With respect to registration applications in progress at EUIPO after the end of the transition period, UKIPO clarified that the holder of such an application may file a “compared” registration application with UKIPO within 9 months from 1 January 2021, exactly for the same brand, with the same specification of products and services, or that are contained in the order made before EUIPO; in order to preserve the filing date of the application submitted to EUIPO; it is also possible to claim any priority of the registration request made before EUIPO together with the previous filing before UKIPO . It will also be necessary to collect the fees charged by UKIPO.
It is noteworthy that, as in Brazil, the United Kingdom legislation provides that the trademark registration will become vulnerable to forfeiture if its use has not started within 05 (five) years from the registration grant date.
The new legislation establishes that any use of the mark in the territory of the European Union, inside or outside the United Kingdom, before January 1, 2020, will be taken into account in order to prove the use of the mark.
Finally, we emphasize that, if there is no interest in having the brand compared / cloned by UKIPO, it is possible to opt-out , presenting a specific requirement after January 1, 2020, so the registration will be considered as non-existent.
Conclusion:
In view of the above, it is clear that BREXIT will generate important consequences in relation to intellectual property rights, especially on the registrations and applications for registration of European trademarks and industrial designs.
The United Kingdom has established a practical way to maintain the protection of registrations granted by EUIPO until the end of the transition period, as well as established a specific procedure for filing registration applications, keeping the dates and characteristics of the one submitted and still in process at EUIPO .
There was also guaranteed time for study and a better understanding of the functioning of the new guidelines and legislation that will emerge within the transition period.
Our team is at your disposal to provide any clarification on the effects of BREXIT in relation to your European registrations and registration requests, as well as to advise you to ensure that your trademark or industrial design is properly protected in the United Kingdom, Europe or elsewhere. any country that has an interest.
