IP-Fälle und Artikel

Brexit: changes to IP protection at the UK border from 01 January 2021

EU national border forces can be requested to detain goods suspected of infringing your intellectual property, following a pan-EU application for action (AFA) filed with the Customs authorities in EU member states. However, as of 01 Jan 2021 a pan-EU AFA granted by the Customs authorities in the EU will no longer cover the UK. Similarly a pan-EU AFA granted by HMRC in the UK will no longer cover the EU 27 after the end of the transition period. As a result businesses that want to protect their IP rights at the border in both the EU and in the UK will need to hold an AFA covering each.

IP rights owners can defend their rights in the EU by asking customs to detain goods found to be suspected of infringing IPR. In order to do so, they should lodge an application for action with the competent Customs department of a particular EU member state requesting them to take action.

However, on 07 December 2020 the UKIPO published new guidance indicating that from 01 Jan 2021 it will generally be necessary to make a separate request via HMRC to obtain an AFA for the UK.

Hence in particular if a business filed a pan-EU AFA in another EU country before the end of the transition period, it will need to make a new UK AFA application to continue to protect its IP rights at the UK border.

Conversely, businesses that filed a pan-EU AFA via HMRC will need to consider re-filing the pan-EU AFA with the Customs authorities of an EU member state before the end of the transition period.

The UK Government will, however, recognise existing applications for IP protection in the UK where an application was made in the UK and handled by HM Revenue & Customs (HMRC) Intellectual Property Approvals. These applications will be stored on a UK register at the end of the transition period. Businesses can continue to seek enforcement in the UK until their AFA expires and there is no requirement in these cases to re-submit a UK application after the transition period.

D Young & Co can assist with filing pan-EU AFAs via the Irish and German Customs authorities and can file national AFAs before the UK, Irish and German Customs authorities.

If you have any questions on this matter, please contact your normal D Young & Co advisor, who will be happy to help.