Brexit and what it means for your IP

• The European Patent System is not affected by Brexit. The UK is, and remains, a member of the European Patent Convention (EPC), as the EPC is unrelated to the EU.
• UK-national European Patent Attorneys are still able to act before the EPO after Brexit.
• Patents continue to be enforced against infringers in the national courts.

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:

1. existing and new EUTMs will not extend to the UK;
2. the UK Government has implemented transitional provisions to convert the UK element of an existing EUTM into a UK national trade mark registration;
3. a separate UK national trade mark registration needs to be filed in parallel with any EUTM; and
4. use of a trade mark only in the UK will no longer be sufficient to keep an EUTM registered.

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:

1. existing and new RCDs will no longer extend to the UK;
2. the UK Government will implement transitional provisions to convert the UK element of an existing RCD into a UK national Design Registration;
3. now that the transition period has ended, any new RCD filings will no longer extend to the UK; and
4. a separate UK national design registration has to be filed in parallel with any RCD.

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.

• The Hague System allows a design to be registered in several territories starting from a single international application.
• As the UK is now a party to the Hague Agreement in its own right, UK applicants continue to be entitled to use the Hague System.
• Registered design protection can be obtained via the Hague system in many major territories, including the US, Japan, the European Union, the UK, Russia and the Republic of Korea. A full list of Contracting Parties is available here.

• Designs that were protected in the UK as EU Unregistered Design Rights on 31 December 2020 continue to be protected in the UK for the remainder of their three-year term as Continuing Unregistered Designs (CUD), which were automatically established on 1 January 2021.
• A new “EU equivalent” UK Supplementary Unregistered Design (SUD) right has also been introduced to mirror the protection provided by EU Unregistered Design Rights.
• SUD rights are established by first disclosure in the UK, but not first disclosure in the EU.

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.

• As of 1 January 2021, only a UK address for service is accepted for new UK patent, design and trade mark applications.
• In particular, it is no longer possible to register an European Economic Area (EEA) address as an address for service in respect of granted European patents designating the UK – only a UK address for service will be accepted.
• Registering a UK address for service is advisable because without such an address the UK Intellectual Property Office will enter the first-named proprietor as address for service on the UK Register and send any official correspondence to them. This could lead to important correspondence being overlooked, misdirected or misunderstood.
• It is not necessary to have a UK address for service to pay renewal fees. For all other actions, such as recordals of assignments, licences and changes of name/address, a UK address for service is required.

Mathys & Squire is offering exclusive discounts and fixed fees on EU & UK trade mark and design filing packages.

EU & UK trade mark filing package

• Filing in both the EU and the UK (one class) at a discounted, fixed fee. This fee will cover all costs up to the issuance of the registration certificate, with the exception of official objections or third-party opposition. Additional class fees will then carry a 20% discount.

EU & UK design filing package

• Filing in both the EU and the UK at a discounted, fixed fee. This fee will cover all costs up to and including the issuance of the registration certificate. This fixed fee assumes we receive the drawings in a ready to file format and excludes the cost of any official objections. Additional designs in a filing will also carry a discount.

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:

• whether rights based on EU legalisation (such as EUTMs, CPVRs and RCDs) are involved and if so, whether the parties to the agreement need to discuss re-negotiation or to agree some contingency provisions, for example that the rights’ owner will take all necessary action or reasonable steps to ensure that UK rights are preserved or whether the UK rights could be sacrificed or excluded in return for a reduction in royalties?
• whether any patent provisions will be affected by the UPC if it comes into force and if so whether the parties to the agreement need to agree now who decides, and on what conditions* the patentee will opt out of the UPC any particular patent or patents, and any knock-on effect on royalty and enforcement provisions in the agreement?

*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:

• What will happen to your EU trade mark rights
• Everything you will need to know about unregistered community designs
• Why it is necessary to file separate EU and UK trade mark applications
• What does this mean for your IP agreements