Following on from Part I of of Brexit and IP, we will look now at a further range of topics including international trade marks, the ramifications of use, exhaustion of rights, infringements and domains. Additionally we will touch on other types of intellectual property which, other than designs, are largely not affected by Brexit.
We would like to assure you that M&D and Ansons will continue to be able to serve your IP needs in both the EU and the UK, as we will have a presence in both territories following the end of the transition period.
We are partnering with Enterprise Ireland in a webinar on 11th November to discuss all things Brexit and Intellectual Property, so register for your spot if you have more questions.
International trade mark registrations
For International Registrations designating the EU, a comparable UK registration will be created following the transitional period. This comparable UK registration will not however be part of the International Registration and will need to be maintained separately.
It is possible for a subsequent designation of the UK to replace the cloned UK registration. This procedure would conserve the filing dates of the ‘cloned’ UK registration but the designation would be subject to examination by the UKIPO and would be published for opposition purposes.
Ramifications concerning the use of a registered trade mark
In order to enforce an EUTMR which was granted more than five years ago, it is necessary to provide evidence that the registered mark has been used in the previous five years within a “substantial part” of the EU.
Use of the mark in the UK, which occurs after 1st January 2021, will no longer contribute to use in the EU and the relevance of use in the UK before 1st January 2021 is likely to decrease over time.
It is not certain that use in one country alone, e.g. Ireland, is sufficient to maintain an EU registration. If any of the marks which are subject to an EU registration are only used in a single country of the EU other than the UK, you may wish to consider securing these trade marks by filing a national application in the country in which use is made, within the next five years.
In the UK, where comparable UK registrations, which have been cloned from EUTMR, have been genuinely used for five years in the EU on or before31st December 2020, that genuine use will be considered relevant in the UK.
First Use, Exhaustion of Rights and Free Movement of Goods
Currently, first use of a trade mark in the UK, by or with the consent of the owner, exhausts rights in the whole of the EEA and the reverse is also true, i.e. first use of a trade mark in the EEA, by or with the consent of the owner, exhausts rights in the United Kingdom, thus allowing free movement of goods within the EU.
After the 1st January 2021, the position in the UK remains the same, i.e. goods put on the market in the EEA will exhaust rights in the United Kingdom.
This is not however reciprocated as the EU authorities have stated in their guidance that “the intellectual property right is not exhausted in the European Union if a good protected by that right has been lawfully put on the market of the United Kingdom.”
Review Jurisdictional Clauses in Key Agreements
It would be advisable to ensure that the UK is mentioned separately, particularly in clauses which mention territory and jurisdiction, in any future agreements, such as co-existence agreements, settlements and licences which concern your intellectual property.
Mention of the EU in existing agreements should cover the UK if it was still part of the EU at the time the agreement was completed.
Pending and threatened infringement actions
After the 31st December 2020, UK courts will no longer form part of the network of EU courts. In view of this, any pending and threatened EU infringement actions are being reviewed. While UK courts can preside over proceedings pending until the 31st December 2020, following this date they will no longer have the authority to deliberate on infringement of EUTMs or cancel EUTM registrations.
Proprietors based in the UK who have any .eu domains, should seek representation from an attorney based in one of the EU member states. The reason is that after 31st December 2020, to hold a .eu domain one must be a citizen of or resident in the EU.
EURid will notify holders of .eu domains with a UK address of the need to update address details. In default of this, .eu domains will be withdrawn on 1st January 2021 and subsequently revoked be on 1st January 2022 thus releasing them for registration and use by third parties.
UK-based attorneys representing EUTMs will lose their capacity to act before the European Union Intellectual Property Office (‘EUIPO’) once the transition period ends. They will be removed from all files in EUTM related proceedings and will be deleted from EUIPO’s database of representatives therefore EUTM owners will require an EU-based representative to communicate with the EUIPO. The only exception to this general rule is where such a representative continues to act in ongoing proceedings.
It will be important to check that your representatives are still eligible to act on your behalf in relation to EUTM actions and disputes after 31st December 2020.
We at MacLachlan & Donaldson / Ansons are able to continue to act before both offices, having offices in both the UK and European Union, and our ability to service your IP needs in both jurisdictions will remain unaffected.
Other Intellectual Property Rights
EU Design Registrations
After 11pm on 31st December 2020, all granted EU Design registrations (‘EUDR’) will automatically have a corresponding UK national design registration created, thus preserving the priority, filing, seniority and renewal dates of the EUDR from which they derive.
Any EU trade mark design application (‘EUDA’) still pending on 31st December 2020, including those which have been accepted but have not yet been formally registered, will need to be re-filed in the UK if protection there is required. If re-filed within 9 months (i.e. by 30th September 2021), the filing date and priority of the corresponding EU application will be maintained.
Protection of patents is largely unaffected by BREXIT.
The UK is party to the Berne Convention which governs international copyright and therefore copyright protection will remain unchanged in the immediate aftermath of BREXIT.
How can we help?
MacLachlan & Donaldson / Ansons will be able to continue to handle the full range of actions and disputes before the EUIPO. If you require assistance in any of the services mentioned in this article or require advice on separate issues before the transition period, please feel free to contact us on firstname.lastname@example.org or email@example.com to evaluate your current position in relation to your IP protection before it’s too late.