FAQs and Guides

Post Brexit intellectual property rights

The date that the UK will leave the EU is still under discussion. The EU granted an extension to the process in early April 2019 offering a hard deadline of 31 October 2019. There were other possible leaving dates allowed for as part of the extension. One of these (01 June 2019) has since been removed from the discussion as the UK has confirmed it will take part in the European Elections on 23 May 2019. Brexit could still happen ahead of the October date if the UK Parliament votes through the Withdrawal Agreement. This would mean that exit day could be brought forward to an, as yet, unknown date but in this instance there would be a deal in place that would include a transition period.

As soon as we have further details we will update this guide. In the meantime, for D Young & Co it is business as usual. As a European firm with an office in Munich, we are able to continue to represent you both in the UK and at the EUIPO regardless of the form Brexit takes and when it happens. There will be no change to the level of service that we provide following the UK’s departure from the EU.

In addition, the UK Government has been preparing for exit day and has issued legislation and technical notices to assist businesses in preparation for departure. These should come into force on the day the UK leaves the EU, whatever date that might be.

Post Brexit: trade marks

To help businesses prepare for Brexit, the UK Parliament has drafted legislation that will ensure that EU trade marks will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark registered in the UK. The legislation is likely to be passed and will come into force on the date the UK exits the EU, whenever that may be.

EU trade mark registrations

All registered EUTMs will be “cloned” into new UK registrations on the date of Brexit. The new registered trade mark will be referred to as a “comparable trade mark (EU)”, and will be created automatically and at no cost to the registered owner. The registration will retain the filing date recorded against the corresponding EUTM and will also inherit any priority and/or seniority dates. The registration will retain its existing EUTM registration number but will be prefixed with UK0009…. so it is easily identifiable as a comparable trade mark (EU). To identify UK rights created in respect of international registrations, the number allocated to the comparable trade mark will be the last 8 characters of the international trade mark (EU) prefixed with "UK008". No certificate of registration will be issued but owners of this new right will be able to access the information online. The “comparable trade mark (EU)” will be a fully independent UK trade mark which can be challenged, assigned, licensed or renewed separately from the corresponding EUTM.

EU trade mark registration opt out

There is a provision to opt out if the EU trade mark owner does not wish to own a “comparable trade mark (EU)”, however it is not possible to opt out if the mark has been put to use in the UK on or after exit day by the registered owner or with their consent; if the mark is subject to an assignment, licence, security interest or other agreement or document; or if there are pending proceedings based on the “comparable trade mark (EU)”. The UKIPO has created a new “notice” template to use for this purpose.

EU trade mark applications

EUTM applications which are pending on exit day can be re-filed as a new UK trade mark application within a period of nine months from exit day, maintaining the filing date, priority date or seniority date. It will be subject to the usual application processes in the UK. The UKIPO has confirmed that current official filing fees will apply.

International trade mark registrations designating the EU

All international trade marks which have designated the EU will be protected in the UK as “comparable trade marks (EU)”. These rights will be the equivalent of a UK national trade mark registration and will not be treated as a trade mark designated under the Madrid Protocol System.

EU trade mark registrations – renewals

The “comparable trade mark (EU)” will retain the same renewal date as the corresponding EUTM. Once the “comparable trade mark (EU)” has been created a separate renewal fee will be due in both the EU and UK.

Where the “comparable trade mark (EU)” is due for renewal in the six months after exit day, a renewal reminder from the UKIPO will be sent to the holder on the renewal date (or as soon as possible thereafter). Holders will be provided with a further six month period (running from the date of the reminder letter) for the “comparable trade mark (EU)” to be renewed in the UK. Standard official renewal fees will apply and we understand no late renewal fee will be charged by the UKIPO during this six month period.

Where an EUTM is due for renewal after exit day, early payment of the fee with the EUIPO, prior to exit day will have no effect and renewal fees will still be payable at the UKIPO.

EU trade marks which have expired before exit day

A “comparable trade mark (EU)” will be created in the following scenario:

  1. The EUTM was due for renewal in the six months prior to exit day.
  2. The EUTM has not been subject to a late renewal action at the EUIPO.
  3. The EUTM is still within its six month late renewal period.

In the above scenario the “comparable trade mark (EU)” will hold an “expired” status and its continued effect in the UK will be dependent upon late renewal of the corresponding EUTM at the EUIPO. Where the EUTM is subsequently renewed as a late renewal the “comparable trade mark (EU)” will automatically be renewed in the UK and no renewal fees will need to be paid to the UKIPO.

If the EUTM is not renewed at the EUIPO, the “comparable trade mark (EU)” will be removed from the UK register after the original EUTM’s late renewal period.

EU certification and collective marks

The UKIPO will create comparable rights before exit day. The regulations governing use of the EU mark at the time of creating the comparable mark will not be automatically imported onto the UK Register. The UKIPO will only contact the holder to provide an English translation of the regulations relating to the comparable right when needed, for example, if the comparable mark is subject to proceedings. In this instance, an English language version of the regulations will be required.

Pending EU trade mark oppositions

Oppositions that have already been filed against a pending EU application will continue before the EUIPO. However if earlier UK rights are the only basis of your opposition and the proceedings are not decided by exit day, the opposition will be unsuccessful and you will need to consider filing a fresh UK opposition against any later filed UK trade mark. We understand that this position is currently being challenged and will update you if this position changes.

In contrast, the UKIPO will ensure that all actions before it which rely on a EUTM which are ongoing on exit day will continue to be heard and will be decided on the basis of the law as it stood prior to exit day.

EU trade mark contentious proceedings

Despite the “cloning” of registered EUTMs onto the UK register there will be no “cloning” of existing revocation and invalidity actions. A new action will need to be started in the UK.

Use requirements

Use of an EUTM, whether inside or outside of the UK, which has been made prior to exit day will count as use of the “comparable trade mark (EU)”.

Where the relevant period for use includes time prior to exit day, use in the EU will be considered. However, where the relevant five-year period includes time after exit day, use of the “comparable trade mark (EU)” in the UK will also have to be shown.

Reputation

A similar approach is being adopted in relation to reputation. The reputation of the corresponding EUTM in the EU prior to exit day (but not necessarily the UK) will be considered for the purposes of the “comparable trade mark (EU)”.

Assignments

Where an EUTM is the subject of an assignment prior to exit day which has not been recorded on the EUTM Register the “comparable trade mark (EU)” will be created in the name of the assignor. Both the assignor and assignee will have the right after exit day to apply to the UKIPO for recordal of the assignee as owner of the “comparable trade mark (EU)” to stand.

Licenses and security interests

EUTMs which are the subject of a licence or security interest which authorise actions in the UK will continue to have effect in the UK. The licence or security interest will be treated as if it applies to the “comparable trade mark (EU)”. However, the recordal of these rights will not be automatic. Where a license or security interest is already registered at the EUIPO before exit day the UKIPO will extend the period within which such transactions must be recorded on the UK Register for a “comparable trade mark (EU)” to 12 months from exit day. If you have any licences recorded against your EUTM that should be re-recorded against the “comparable trade mark (EU)”, please contact us.

Any licensee should be notified of the new “comparable trade mark (EU)” and checks should be made to ensure the creation of the new “comparable trade mark (EU)” does not breach any existing agreement.

EU trade mark registrations and applications reinstated after exit day

These trade marks will not automatically be “cloned” into “comparable trade marks (EU)”. The holder of these trade marks will need to make a specific request to the UKIPO to create a “comparable trade mark (EU)”. Reinstatement of EU rights will only be considered if an application is made to the EUIPO within 12 months of the missed deadline.

If an EUTM registration is reinstated after exit day and you have not been granted a “comparable trade mark (EU)”, the UKIPO needs to be informed within six months.

EU trade mark registration – conversion

Eligible EUTMs which are in the three month period to request conversion into a national right on exit day will not be included in process of “cloning” into a “comparable trade mark (EU)”. However, their entitlement to convert into a UK trade mark will be respected. Applications for conversion after exit day should be made to the UKIPO within the usual three month period.

EUTM injunctions granted before Brexit

Pan-EU injunctions granted by the UK Courts on the basis of EUTMs prior to Brexit will remain in place and be effective in the UK and the remaining EU member states. The position is likely to be the same in relation to registered Community designs.

EUTIM injunctions post-Brexit

On exit day there are likely to be a small number of ongoing cases relating to EUTMs before the UK Courts. These cases will continue to be heard as if the UK were still an EU member state, however, the UK Courts will not be able to grant pan-EU injunctions (or other pan-EU relief) Similarly courts in member states of the EU will not be able to grant injunctions and/or other relief that extends to the UK. The position is likely to be the same in relation to registered Community designs.

Customs applications for action (AFAs)

UK national and EU Customs AFAs granted by the Customs authorities in the UK will continue to remain in place in relation to the UK only. Any EU AFAs granted by the Customs authorities of another EU member state will no longer cover the UK. Importantly, EU AFAs granted by the UK Customs authorities will no longer cover remaining member states of the EU post Brexit.

Post Brexit: designs

To help businesses prepare, the UK Parliament has drafted legislation (The Trade Marks (Amendment etc) (EU Exit) Regulations 2018) that will ensure that EU designs will continue to be protected and to be enforceable in the UK by providing an equivalent design registered in the UK. The legislation is likely to be passed and will come into force on the date the UK exits the EU, whenever that may be.

Registered Community designs

The UK Government has confirmed through proposed legislation that it will ensure that an equivalent enforceable registration will be provided for existing registrations which are fully published. The above proposed legislation will also apply to international (Hague) design registrations on the exit date, which designate the EU, and which are published and deemed accepted by the EUIPO. The creation of the equivalent design registration in the UK will be at minimal administrative burden. The registered owner will be informed that a UK right has been granted, but will have the option to opt out.

Pending registered Community designs

For Community designs which are pending at the time of the actual exit from the EU, or which are registered but not yet published (as a result of deferred publication), the UK Government has proposed legislation which will provide an option for the applicants to apply for the same protection in the UK within a period of nine months from the exit date, maintaining the date of filing (and, it is anticipated, priority) of the EU application. This proposed re-application process will also seemingly apply to international (Hague) design registrations on the exit date, which designate the EU, and which are either unpublished; still at the application stage; or which are not yet deemed accepted by the EUIPO.

Unregistered Community designs

The UK Government has confirmed that any unregistered Community design right arising before the exit date will continue to be valid for the remaining period of protection. In addition, the UK is proposing a “supplementary unregistered design right” which mirrors the features of the unregistered Community design; this is a welcome proposal as it should mean that design features including surface decoration (for example, 2D logos) can be protected under unregistered design law in the UK going forward.

New UK registered designs

It has been made clear that the filing of a new UK trade mark or design application, in the designated nine month period, will be at the usual cost and subject to the usual application processes in the UK.

UK registered design numbering system

For UK registered designs that are re-registered from an existing EU registered design, the UK registered design number will consist of the full 13-digit number assigned to the EU registered design, but prefixed with the digit “9”.

The following examples demonstrate how such re-registered UK designs will be numbered.

Existing EU design number Re-registered UK design number
004048098-0004 90040480980004
000000021-0001 90000000210001

For existing international registered designs that designate the EU, the number allocated to the corresponding UK registered design will consist of the full international design number prefixed with the digit “8”. For example:

Existing international design number Re-registered UK design number
D069640-0001 (DM/069 640) 806964000010000
D069629-0001 (DM/069 629) 806962900010000
D069629-0002 (DM/069 629) 806962900020000
Customs applications for action (AFAs)

UK national and EU Customs AFAs granted by the Customs authorities in the UK will continue to remain in place in relation to the UK only. Any EU AFAs granted by the Customs authorities of another EU member state will no longer cover the UK. Importantly, EU AFAs granted by the UK Customs authorities will no longer cover remaining member states of the EU post Brexit.

Post Brexit: exhaustion of rights

Currently, IP rights are considered “exhausted” once goods have been placed on the market by the IP owner or with the owner’s consent anywhere within the European Economic Area (EEA), namely the member states of the European Union plus Iceland, Liechtenstein and Norway.

In a no-deal scenario, the UK will unilaterally continue to recognise EEA regional exhaustion from exit day. Accordingly, IP rights in relation to goods which are being imported into the UK from an EEA country will continue to be considered as exhausted, at least for a temporary period. The UK Government is also considering options for what exhaustion regime should apply after the end of such temporary period. However, the position relating to exports from the UK may well be different, if the UK and EU fail to reach agreement. Therefore, there could be restrictions from exit day on the parallel import of goods from the UK into the EEA.

Post Brexit: geographical indications

The UK Government has confirmed that it will set up its own GI schemes which will be WTO TRIPS compliant, broadly mirror the current EU regime and be no more burdensome to producers. This will apply from exit day.

It identifies, among others, the following issues:

A public consultation will be held to include the UK GI logo and appeals process. The protections will be similar to those enjoyed now by UK GI producers, with all 86 UK GIs given new UK GI status automatically. There are two issues for UK producers of GI products to consider:

  • the use of a new UK logo on products marketed in the UK
  • the preparation of an application for GI status in the EU, or other steps that producers may wish to take in order to protect product integrity – for example, applying for trade mark protection.

On this second point the UK Government guidance anticipates that all current UK GIs will continue to be protected by the EU’s GI schemes. If that does not occur producers might consider protecting their products by applying for EU collective marks or EU certification marks.

A further point is that the UK would no longer be required to recognise EU GI status. EU producers would be able to apply for UK GI status. The UK Government will be publishing guidance on the UK GI schemes in early 2019. This particular point has been highlighted by the EU negotiators as being very important and requires a clear resolution before a final deal is reached. We assume there is a concern, for example, that without a deal, in theory, ‘British Champagne’ may be a possibility.

The guidance advises that “further information on the new UK schemes will be published in the coming months. We aim to give businesses and individuals as much certainty as possible as soon as we can, and to ensure that any new requirements are not unduly burdensome.”

Post Brexit: .eu domain names

In order to own a .eu domain name after the UK exits the EU individuals and entities will need to reside or be established (that is, have their registered office, central administration or principle place of business) within the EU. Domain names not meeting this criteria may be revoked after exit day.

This means that, save for the exception of "well known marks" (as defined under Article 6bis of the Paris Convention), IP rights holders will no longer be able to rely on their UK registered or unregistered rights when seeking to challenge .eu domain names that are subject of speculative and abusive registration.

Holders of .eu top level domains are therefore strongly advised to check whether they will continue to meet the above eligibility criteria. If not, you may wish to discuss transferring your registration(s) to another top level domain such as .com, .co.uk, .net or .org or transfer ownership of such domains to an EU based individual/entity.

Post Brexit: patents & the UPC

There is no change to the way patents can be filed and prosecuted. It is business as usual.

The UK will continue to be a member of the European patent system, which is governed by the EPC, a treaty between contracting states to the EPC that is, and will remain, completely separate from the EU.

A number of non-EU members, such as Norway, Switzerland and Turkey, have long been EPC contracting states. Accordingly, the UK's exit from the EU simply means that the UK will join these other EPC contracting states who are not members of the EU. It will not change the EPC in any way.

The UK exit from the EU has no effect on our ability to represent clients before the EPO. There will be no change in our ability to file or prosecute patent applications or our ability to file or defend oppositions to granted patents. The UK Government also explicitly notes that, separate to UK patent matters, European patent attorneys based in the UK, such as D Young & Co, can continue to represent applicants before the European Patent Office (EPO), since it is not an EU body; this has also been confirmed by the EPO itself.

Patent protection in the UK will continue to be available via the EPO by validating granted European patents in the UK after grant, and our European patent attorneys will continue to act in the usual way in all matters before the EPO.

European patent applications may still designate all contracting and extension states and we will continue to be able to secure protection across the EPC.

Unitary patent and Unified Patent Court

The Unified Patent Court will hear cases relating to European patents and the new unitary patent – both administered by the non-EU European Patent Office (EPO). The Unified Patent Court will be an international patent court established through an international agreement (the Unified Patent Court Agreement) between the EU countries.

There is a possibility that the Unified Patent Court will not be fully ratified and never come into effect. In this case there will be no changes for UK and EU businesses at the point that the UK exits the EU.

In the event that the Unified Patent Court comes into force after the UK has left the EU, then UK, EU and third country businesses will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the EU, and they will be able to validate the UK upon grant of an EP application as before. UK business will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the other contracting EU countries.

Correspondence addresses and confidentiality

European patent attorneys based in the UK will continue to represent applicants before the European Patent Office, since it is not an EU body. Conversely meanwhile, although prosecution of UK patents is by UK patent attorneys, it is possible for the owner of a UK patent to have an address for service elsewhere in the EEA.

In light of this, the UK Government has now provided assurance that this will continue, and that there is no plan to change current client-attorney privilege for non-UK attorneys in the EEA.

EU Biotech Directive

The UK Government proposes to retain the existing EU law (EU Biotech Directive) relating to biotech inventions after exit day. Therefore, the legal requirements for patenting biotech inventions will remain in place - these requirements are already implemented in UK national patent law. Patent examiners will continue to apply the same law when examining patent applications in this area. Third parties who wish to challenge the validity of a patent will be able to do so on the same grounds as at present.

Post Brexit: supplementary protection certificates and regulatory protection

The UK Government essentially proposes to retain the existing EU law relating to SPCs after exit day. The SPC regime in the UK will continue to operate as before, regardless of whether the UK exits the EU with an agreement or if there is no deal.

D Young and Co will continue to be able to represent clients in relation to SPCs. Although SPCs are based on EU legislation they are national rights, so the filing of SPCs will remain unchanged. There will be no change in our ability to file UK SPCs, nor in other EU countries on which we continue to instruct our trusted network of SPC agents as now.

The UK Government states that “… all other EU legislation relevant to patents and supplementary protection certificates will be kept in UK law.”

Proposed legislation has now been laid before the UK Parliament, which will essentially retain the existing EU SPC Regulations after the UK leaves the EU. However, after exit day a UK national marketing authorisation (MA) will be required for both medicinal products and plant protection products in order for the product to be entitled to a UK national SPC. The EU-wide MAs granted for medicines by the European Medicines Agency (EMA) after exit day will no longer apply to the UK and will not be available to support UK SPCs filed after exit day. However, as indicated below, all existing granted EMA MAs will be “cloned” into UK MAs after exit day, so any UK SPCs based on EMA MAs will be unaffected.

Under the draft legislation the duration of SPCs will be calculated based on 15 years from the first marketing authorisation in an EEA member state, if this precedes that of the UK national authorisation. The term of the SPC, as now, will be capped at five years from the expiry of the basic patent).

The UK Government also states that existing SPCs and licences in force in the UK will remain in force automatically after exit day, and the legal requirements and application process for new SPCs in the UK will remain essentially the same. This is essentially confirmed in the proposed legislation.

The UK Government has also indicated changes in the regulation of human and veterinary medicines and the various forms of regulatory-based protection available. For medicines, existing MAs granted centrally by the EMA will automatically be converted into UK MAs after exit day. Existing UK MAs based on the mutual recognition or decentralised procedures will be unaffected.

The UK Government also states that regulatory data and market exclusivity will remain available based on UK MAs after the UK exits the EU, and the period of “8+2+1” years for this form of regulatory protection will remain unchanged. After the UK’s exit from the EU, the start of this period will be the date of marketing authorisation in the EU or UK, whichever is earlier.

The UK Government also states that paediatric medicines will be regulated by a UK system after the UK exits the EU, and incentives will remain to encourage such medicines onto the UK market. Under the proposed legislation, the 6-month extension will remain available for SPCs for medicines on which agreed paediatric studies have been carried out, provided that the product is authorised in all EU member states as well as the UK. As now, this period will not be available for orphan medicines, which will instead retain the additional 2 years’ market exclusivity as set out below.

The UK Government also states that a dedicated regulatory system for orphan medicines (for the treatment of rare diseases) will continue after the UK exits the EU, and a specific UK orphan MA will be granted for such medicines. This will include incentives to encourage such medicines onto the UK market. The UK Government has now confirmed that the 10 year market exclusivity for orphan medicines will remain after the UK exits the EU. This will also begin on the date of authorisation in the EU or UK, whichever is earlier. Orphan medicines for which agreed paediatric studies have been carried out will, as now, be entitled to an additional two years’ market exclusivity.

Finally, the UK Government has indicated that they will retain the existing “EU Bolar” law which exempts from patent infringement trials carried out on generic medicines in order to obtain regulatory approval, for marketing after the patent expires.

Post Brexit: copyright

With regard to copyright, the UK Government explains that, as a result of the UK’s membership of the main international treaties on copyright (which will not be affected by Brexit), the scope of protection will remain largely unchanged. Further, the EU Regulations and Directives on copyright and related rights will be “ported” into UK law under the EU Withdrawal Act 2018. It explains, therefore, that the immediate issue will primarily be one of reciprocity of those EU Regulations and Directives.

It identifies, among others, the following issues:

Sui generis database rights

Currently, businesses in European Economic Area (EEA) member states (such as the UK) are eligible for database rights in each member state (broadly, these rights do not arise in relation to databases created by non-EEA businesses).

On the UK’s departure from the EEA, database rights currently in existence will continue to exist in the UK but only UK citizens, residents and businesses will be eligible for new database rights in the UK. Similarly EEA member states will be under no obligation to recognise existing or grant new database rights to UK businesses in those member states. In light of this the UK Government recommends reviewing existing licensing arrangements and, where possible, imposing licensing terms which mitigate this potential loss of rights.

Portability of online content service

Prior to Brexit, UK consumers can access their online content services (for example, Netflix) when they temporarily travel to another EU member state. The same is true for EU customers temporarily visiting the UK. Portability of online content services between the UK and EU will cease when the UK leaves the EU. Consequently UK customers visiting the EU and EU customers visiting the UK may see restrictions to the content ordinarily available to them when in their home state.

Country-of-origin principle for copyright clearance in satellite broadcasting

Currently, if a satellite broadcaster clears the copyright requirements in its “home” member state it can broadcast into any other EEA member state. This will cease to apply to broadcasts from the UK and UK-based satellite broadcasters that currently rely on the country-of-origin copyright clearance rule when broadcasting into the EEA may need to clear copyright in each member state to which they broadcast. The UK will continue to apply the country-of-origin principle to broadcasts from any country. Wider issues regarding broadcasting and video on demand are addressed in the UK government’s specific guidance on this issue.

Orphan works

Prior to Brexit, cultural heritage institutions established in a member state of the EEA are entitled to digitise orphan works in their collection and make them available online across the EEA without the permission of the right holder. The UK Government explains that UK-based cultural heritage institutions that continue to do this may be infringing copyright.

Therefore, except for those in specialised industries (such as broadcasting) or with specific copyright portfolios (such as those with database rights), businesses are unlikely to be significantly affected, at least immediately, following exit day.

Post Brexit: plant variety rights and marketing of seed and propagating material

Any community plant variety rights (CPVR) which have been granted, including those held by UK business, would be automatically recognised in the remaining 27 EU member states and would be automatically recognised and given protection under the UK Plant Varieties Act.

CPVR applications which have not been granted by exit day would not be extended to cover the UK. To obtain protection in the UK, a separate application for rights in the UK would need to be made following the usual process for UK plant variety rights, using the same priority date and distinctiveness, uniformity and stability (DUS) test.

For new varieties post exit day, two separate applications – a CPVR and a UK PVR - would need to be made to achieve the same geographical coverage which is presently achieved by one application. The cost implications for breeders are being reviewed by the Animal and Plant Health Agency (APHA). It appears that DUS tests from the EU may be accepted by the UK but that the Community Plant Varieties Office will not accept the results of UK DUS testing.

Marketing seed and propagating material

Business wishing to market seed and propagating material in both the EU and the UK would need to separately apply for listing in the EU Common Catalogue and the UK National Listing.

The UK would apply for its certification processes to be considered as a “third country recognised by the EU as equivalent for seed certification”.

Varieties that are already registered on the EU Common Catalogue but are not on the UK National Listing, are currently being added to the UK list which will allow them to be marketed for a period of two years after a no-deal Brexit. Any business wanting to add varieties to the National List in this way should contact APHA. After the two year interim period, businesses would need to comply with the new UK arrangements.