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Brexit Update on Intellectual Property

The EU Withdrawal Bill allowed for a transition period for the UK’s exit from the EU during which time the UK remained in the EU and the status quo maintained. This transition period ends on:-

31 December 2020

The transition period has not been extended and the effects of the UK leaving the EU will come into effect from 1 January 2021. It now looks certain there will not be any extension and, whether or not a deal is reached on our trading relationship, there will be implications for intellectual property going forward, namely:-

  1. Owners of existing EU Trade Mark (“TM”) registrations and Community Design Registrations will be issued automatically and without charge by the UK Government, a comparable UK registration, mirroring the same details and dates, prior to the final Exit Date of 31 December 2020;
  2. Owners of existing EU Trade Mark applications and Community Design applications at 31 December 2020 will have a nine month period until 30 September 2021 to request a comparable UK application mirroring the same details as their EU applications but will have to pay official fees for the application.
  3. Comparable UK registrations due for renewal in the six month window after Brexit will still need to be renewed in the UK, even if the EU renewal was undertaken in advance of 31 December 2020 (in the six month period in advance of the final renewal date).

Do trade mark or design owners have to take any different action now?

An EU TM application has to be examined and then go through a three month opposition period to secure registration. As such, an EU TM application filed now will not secure registration before 31 December 2020. You could still file an EU TM application and request a cloned application in January paying the official fees. The cloned UK TM application will still have to go through examination, and it will delay obtaining the UK TM registration, as opposed to filing a UK TM application as well as an EU application.

If you are launching a new product in the UK, there could be benefit to file a separate UK TM application in relation to new product names, as registration in the UK could be secured by December.
EU Design registration is a much faster process, being a deposit system, and therefore it is less of an issue. An EU design application filed in early December 2020 could still be registered by 31 December 2020, resulting in both an EU and UK clone design registration issuing for the cost of an EU design application. Design registration does require the design to be new, with public disclosure no more than twelve months ago, but ornamentation can be protected such as logos, as well as shapes.

A separate UK and EU registration will be required after Brexit for both trademarks and designs.

Any other actions to take?

If you have registered a .eu domain name, check you/your business can still hold it after the final Exit date i.e. the end of the transition period – it requires to be held by an EU individual or entity with an address in an EU member state and a two month period to alter details will be allowed. Separate customs watches may be required for the EU and UK, if counterfeits are an issue.