The UK has now left the European Union and the so-called ‘transition period’ has now ended. As a result, new EU trade mark and registered design filings no longer cover the UK (meaning that separate UK applications need to be filed to cover the UK). European patents are unaffected by Brexit.
On this page, we hope to dispel some of the myths surrounding how patents, trade marks and design rights are affected by Brexit.
Mathys & Squire’s ability to represent its clients in the UK and Europe is not affected by Brexit. As a firm, we remain a European business with offices in the UK, Germany, Luxembourg and France and we continue to represent our clients across Europe.
The ability to file and own a EUTM is not dependent on the applicant having a presence in the EU or being a national of an EU Member State, however:
If you are considering filing a trade mark registration and there are commercial reasons why you would wish to avoid uncertainty, then speak with your Mathys & Squire adviser who will consider with you the pros and cons of parallel EUTMs and UK Trade Mark Registrations.
Whilst we consider there is good cause to believe that the UKIPO will introduce a procedure that allows for Seniority claims to be reversed for UK registrations or for such registrations to be revalidated, the position at the moment is not clear. Therefore, our recommendation is that in future the owners of EU trade marks do not claim seniority for their corresponding UK registrations but should instead maintain those national rights, renewing them when required.
Also, where seniority has been claimed for a UK registration, we consider it would be prudent, for the avoidance of all doubt, to review whether it is still possible to have it late-renewed at the UKIPO and, if so, recommend renewal.
Mathys & Squire are able to act for clients both with respect to EUTMs and UK national Trade Marks after Brexit. Mathys & Squire can also handle any transitional requirements necessary in respect of existing EUTMs to preserve UK Trade Mark rights.
The ability to file and own a RCD is not dependent on the applicant having a presence in the EU or being a national of an EU Member State and so will not be affected by Brexit, however:
If you are a considering filing for design protection in the current EU and there are reasons why you would wish to avoid uncertainty, then speak with your Mathys & Squire adviser who will consider with you the pros and cons of parallel RCDs and UK Registered Designs.
Mathys & Squire are able to act for clients both with respect to RCDs and UK national Registered Designs after Brexit. Mathys & Squire is also able to handle any transitional requirements necessary in respect of existing RCDs to preserve UK Registered Design rights.
Although UK Unregistered Design Rights are still available to qualifying persons, the protection afforded is somewhat different from that afforded by EU Unregistered Designs Rights. We would therefore recommend not simply relying upon Unregistered Designs Rights but that you speak to your Mathys & Squire advisor to discuss filing for Registered Design protection.
Since Brexit, existing and new CPVRs will no longer extend to the UK; the UK Government will implement transitional provisions to convert the UK element of an existing CPVR into a UK National PVR; and a separate UK national PVR needs to be filed in parallel with any CPVR.
If you are a considering filing a CPVR and there are commercial reasons why you would wish to avoid uncertainty, then speak with your Mathys & Squire adviser who will consider with you the pros and cons of a parallel CPVR and UK national PVR.
Mathys & Squire can act for clients both with respect to CPVRs and UK national PVRs post-Brexit. We can also handle any transitional requirements necessary in respect of existing CPVRs to preserve UK PVR rights.
UK courts will continue to pass judgment on UK IP rights, including European Patents validated in the UK (and any registered EU Trade Marks and Designs that have been converted into UK rights).
SPCs are national rights based on EU legislation and frequently rely on EU marketing authorisations. Brexit will have no impact on SPCs in EU countries.
It seems likely that the UK will want to continue providing the reward of SPC protection, and there will be a strong desire for existing and future SPCs/SPC applications to continue to have effect in the UK. It is expected that the UK will therefore enact new legislation to provide a legal basis for existing and new SPC cases, although this is not certain.
Mathys & Squire is offering exclusive discounts and fixed fees on EU & UK trade mark and design filing packages.
EU & UK trade mark filing package
EU & UK design filing package
To find out more about these exclusive offers and discounted fees, contact our Brexit team who will be happy to discuss them with you.
There are many uncertainties in respect of IP rights governed by EU legislation (EUTMs, RCDs, Unregistered EU Design Rights, CPVRs, Data Base Rights, Geographical indicators of origin, etc.). In addition, although not strictly an IP-related issue, the future involvement of the UK in EU-funded research projects is very uncertain and this uncertainty may affect your IP agreements.
From an IP view point, existing agreements should be reviewed to check, for example:
*For example: whether the UK is in or out of the UPC, the particular patent and commercial circumstances, and bearing in mind that it is not possible to opt-out where an action is already pending before the UPC and that it is possible to change your mind once (e.g. to opt back in having opted out).
The above considerations also apply to agreements being drafted now and to future agreements. For the present, it may also be worth considering including a break clause contingent on the outcome of Brexit, if the likely scenarios afterwards are not sufficiently clear that contingency clauses covering all likely scenarios can be included.
Mathys & Squire is proud to employ people of different nationalities, with many coming from countries within the EU. We have taken steps to ensure that the firm has a number of locations inside the ‘post-Brexit EU’ (i.e. without the UK). This has placed us in a strong position to be able to handle both UK trade marks and designs, as well as EU Trade Mark Registrations and Registered Community Designs, and we have been working with our clients on cost-effective strategies for doing so.
A downloadable PDF with this information is also available here. If you have any questions, then please contact your usual Mathys & Squire adviser or for more information on this topic, please contact [email protected]
*Plus two extensions and two validation states.
To help clients and IP owners understand how Brexit will affect their trade mark, design and patent portfolios, our experts have created a series of bitesize podcasts on a range of topics:
Data provided by Mathys & Squire has featured in an article by City A.M. highlighting a surge in trade mark applications following Brexit, which has in turn increased the wait time for trade mark application approval.
Click here to read more
Mathys & Squire has featured in an exclusive article published by The Telegraph, covering the introduction of so-called ‘security bonds’ of at least £50,000 for UK businesses seeking to litigate in the EU post-Brexit.Click here to read more
The UK’s exit from the EU may have an effect on all types of IP where there are existing agreements or licences in place. An IP agreement, whether it’s a compromise agreement or a licence, will usually be defined by territory and by reference to the relevant IP rights. Click here to read more
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