What next for Brexit and IP?
On 31 January 2020, having ratified the Withdrawal Agreement, the UK left the EU and entered into a transition period which ends on 31 December 2020. Writes Richard Plaistowe.
During this transition period, EU law has continued to apply to the UK. Therefore, so far as the protection of EU intellectual property rights is concerned, it has been as though the UK had not left the EU, but this will not be the case after the expiry of the transition period
The Withdrawal Agreement makes specific provision for the continued protection of EU trade marks and designs in the UK after the expiry of the transition period, in the following way:
EU trade marks
A proprietor of an EU trade mark registered before the end of the transition period will automatically gain a corresponding registered UK trade mark free of charge and without any application procedure. These UK trade marks will have the same renewal and filing dates as the corresponding EU trade mark.
A pending EU trade mark application will not automatically trigger a corresponding UK application at the end of the transition period. Applicants will have 9 months to file a new UK trade mark application (by 30 September 2021) claiming the filing or priority date of the EU application.
Any EU trade mark application which is filed from now on will still be pending at the end of the transition period. Although a corresponding UK application can, within 9 months, be filed on the priority of the EU application, if you want registered rights in UK as soon as possible, we recommend that a parallel UK application be filed at the same time as the EU application.
Registered Community designs
A proprietor of a Community design registered (and published) before the end of the transition period will automatically gain a corresponding registered UK design for the same remaining period of protection. This will be done free of charge and without any application procedure. These new registered UK designs will have the same renewal and filing dates as the corresponding registered Community design.
A pending application for a Community design (or an unpublished registered design) will not automatically trigger a corresponding UK application. Applicants will have 9 months to file a new UK design application (by 30 September 2021) claiming the filing date of the EU application.
To avoid the need for a duplicate filing, we recommend filing new applications for Community designs as soon as possible and no later than the end of October 2020 (to allow sufficient time for the application to be published) and publishing registered Community designs whose publication has been deferred, before the end of the transition period.
The UK will introduce new UK trade mark rights and designs corresponding to international trade marks and design registrations protected in the EU before the end of the transition period.
Pending applications for international trade marks and designs designating the EU will be treated in much the same way as EU trade mark applications and Community design applications (discussed above).
At the end of the transition period, all UK registrants who are not eligible to own a .eu domain name (ie who are established in the EU or who are not citizens of an EU member state) will no longer be able to register or continue to own a .eu domain name.
All.eu domain names held by UK registrants who have not demonstrated their eligibility to own a .eu domain name, will be revoked on 1 January 2022 and then available for general registration.
If UK registrants wish to continue using their .eu domain name and to avoid this being registered by others after 1 January 2022, we recommend UK registrants transfer registration of .eu domain names to an eligible individual (ie a resident or citizen of an EU member state or a legal entity established in the EU).
For more information on .eu domain names, we recommend that you read our technology law blog post on the topic.
Richard Plaistowe is an intellectual property principal associate at Mills & Reeve.