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EU Withdrawal Bill completed – How will this affect my Intellectual Property?

Last week, Boris Johnson’s EU Withdrawal bill completed its journey through Parliament, gaining Royal Assent and, assuming the EU Parliament now ratifies it as well, the UK will exit the EU at 11pm on 31st January 2020.

Brexit update on IP

How is this going to affect my intellectual property?

Well, immediately not at all – the position with the deal is that the UK enters a transition period that will last initially until 31 December 2020 and, in this period, the status quo is maintained with the UK remaining in the EU and the single market. Currently, the legislation states the transition period can be extended once if an application is made by 1 July 2020, to a final date of 31 December 2022. If this occurs, the status quo is maintained until that date with EU IP protection still covering the UK until then.

If, however, we assume the UK Government adheres to its manifesto pledge not to extend the transition period and this ends on 31 December 2020, the following will occur:

  1. Owners of existing EU Trade Mark (“TM”) registrations and Community Design registrations will be issued automatically and without charge by the UK Government, comparable UK registrations, 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 comparable UK applications mirroring the same details as their EU applications but will have to pay official fees for the applications; and
  3. Comparable UK registrations due for renewal in the six month window after the Exit Date 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 action now the bill has become law?   

No, not at this point in time, although it will depend on whether the transition period is extended or not.

If you are launching a new product in the UK in the latter half of 2020, and a request to extend the transition period has not been made by the UK Government prior to 1 July 2020, there could be benefit in filing a separate UK TM application in relation to new product names, as an EU trade mark application may not gain registration before 31 December 2020.

An EU TM Application takes approximately five to eight months to secure registration without opposition, and so those filed after May 2020 may not secure registration in advance of this date. While a comparable application can be requested later (with payment of the official fees), with the UK TM registration procedure being so quick, owners could have a UK TM registered before launch, which would be of benefit if the UK is a major market of interest.

EU Design registration is a much faster process, being a deposit system, and therefore is less of an issue. An EU design application filed in early November 2020 could be registered by 31 December 2020.

Separate UK and EU registrations will be required after the transition period for both trade marks and designs.

What about .eu domain names?

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 – as it needs to be held by an EU individual or entity with an address in an EU member state. A two month period to alter details will be allowed.

What about custom watches?

If counterfeits are an issue for your business, separate customs watches will be required for the EU and UK after the end of the transition period.

We’ve got it covered

Murgitroyd is a pan-European firm of patent and trade mark attorneys with offices in Aberdeen, Belfast, Cardiff, Dublin, Geneva, Glasgow, Helsiniki, London, Milan, Munich, Newcastle, Nice, Southampton and York, and can provide advice and assistance on all aspects of your intellectual property in the UK and Europe.

To find out more visit our Brexit page or contact Eleanor Coates:

Brexit Update On Intellectual Property
Eleanor Coates – Director, Trade Marks

Find us on Twitter using @Murgitroyd.