The UK has a deadline of 1 July 2020 to request an extension to the end of the current transition period. If an extension is not requested (the government has indicated it will not be requesting an extension), or agreed, the transition period will expire on 31 December 2020 as planned - with or without a deal. Accordingly, for the purpose of this article, we assume there will be no extension.
Although the current global pandemic has likely impacted budgets, it is important that you do not lose sight of Brexit despite these restraints.
Accordingly, our 10 key points concerning Brexit and IP are:
1. EU trade marks and designs will be automatically cloned on to the UK Registers at 11pm on 31 December 2020.
Now is a great time to review your existing EU trade marks and designs to ensure that the coverage offered by these registrations remain sufficient for the UK. Should additional protection be required, we recommend seeking protection as soon as possible and...
2. Continue to file EU trade mark and designs, where protection is needed in the UK and EU.
Given that the end of the transition period is 7 months away, there is still plenty of time to apply for EU trade marks and designs and, assuming there are no objections or oppositions, have these applications register. This means that they will be automatically cloned on to the UK Registers and you have saved the cost of filing separately in the UK.
Should your EU trade marks and designs fail to register before the end of the transition period, you have the option to re-file in the UK and claim back to the original filing date (there will be a 9 month grace period in which to do this so, by filing before 31 December 2020, you can effectively delay incurring the UK filing fees).
3. EU Designations of International Registrations will be treated slightly differently. Whilst registered designations will be automatically cloned on to the UK Register, this will be as a national UK right and not a UK designation. Likewise, if an EU designation has not yet registered, it will need to be re-filed as a UK national right (but claiming back the original filing date within the 9 month grace period).
4. EU unregistered designs existing at the end of the transition period will continue to be protected in the UK until the EU right expires.
A new UK “supplementary unregistered design right” is being created, equivalent to the EU unregistered design right, for new designs.
However, it is currently unclear whether an EU unregistered design right will arise if first disclosure occurs in the UK, or whether a UK supplementary unregistered design right will arise if first disclosure occurs in the EU, so it may be sensible to make simultaneous disclosure.
5. New national UK rights will need renewing separately in the UK, in addition to the renewal of the existing EU right if both registrations are to be maintained.
As the EU designations of an International Registration will be cloned as standalone UK national rights, it will be necessary to subsequently renew such rights in the UK, rather than renewing under the International Registration process.
6. Use of a trade mark in the EU (and not necessarily in the UK) prior to the end of the transition period will be sufficient to maintain a new national UK right for a five year period after the 31 December 2020.
Use of a trade mark in the EU (and not the UK) after the end of the transition period will not be taken in to account. After the five year period, if the new national UK right has not been used in the UK, it will become vulnerable to cancellation on the basis of non-use.
It is not clear whether use in the UK will continue to validate the existing EUTM for a period after the end of the transition period.
7. An EU Customs Application for Action filed via the UK HMRC will be replaced with a UK Customs Application for Action after the end of the transition period.
In order to maintain customs protection throughout the EU after 31 December 2020, a fresh EU Customs Application for Action will need to be filed.
8. The UK will continue to recognise the EEA exhaustion regime for a temporary period after 31 December 2020.
During this period, IP-protected goods first sold in any of the continuing EU member states can continue to be imported into the UK. However, EEA member states may not recognise UK exhaustion, so export of IP-protected goods from the UK into the EEA may require the consent of the IP rights owner.
9. Holders of .eu domain names must have an establishment in the EEA. Accordingly, those who only have an establishment in the UK at the end of the transition period will no longer qualify to hold an .eu domain.
Any .eu domain name held by a UK-based entity will be withdrawn if the UK owner has not established an EEA entity within 2 months after 31 December 2020, and will be revoked and made available to others if the UK owner has not established an EEA entity by 31 December 2021.
10. Provisions are to be made in respect of disputes relating to EU trade marks before the English Courts which are ongoing at the end of the transition period, but these are not yet clear.
Decisions in EUIPO actions after this date will not affect the new national UK right so separate UK proceedings may be required. Further, actions at the EUIPO based solely on UK rights will fail after 31 December 2020. Therefore, we recommend that you review your contentious matters.
Finally, Kemp Little confirms that there will be no disruption to clients with EU trade marks or designs even in the case of no deal and no extension.
EU was open to discussions about an extension to give more time for talks, and warned that a no-deal would prove to be "very, very disruptive".