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Intellectual Property Rights After Brexit - What You Need to Know

1 February 2021

This article summarises the key changes to intellectual property rights effective from 1 January 2021 after the transition period ended, including:

  • the impact on existing EU trade marks
  • what to consider when applying for a new UK or EU trade mark
  • how to protect your data
  • copyright
  • whether you can host an eu. domain
  • changes to the remedies available when trying to protect your intellectual property rights at court

Trademarks

Existing EU trade marks

Existing EU trade marks will continue to have protection in the UK under the terms of the Withdrawal Agreement.

The UK will clone all existing EU trade marks into a new and comparable UK mark. Owners will then hold both an EU and UK trade mark for the same mark which may be challenged, assigned, licensed and renewed independently of each other. The converted UK mark will retain its original EU registration number (prefixed with UK009) and filing date for the purpose of renewal.

Why can’t I find my comparable UK trade mark online?

The cloned UK trade marks will not be immediately available to search on the UK registry due to the delay in updating the UK systems however they will be protected in law from 1 January 2021. If you hold an EU trade mark there is no action required from you at this stage. The UK intellectual property office will contact owners if they require any additional information.

What if I don’t want a UK trade mark?

The issue of a comparable UK trade mark is free of charge to the holder and grants your mark protection in the UK. However, if you do not want protection in the UK you can opt-out by submitting a notice to the intellectual property office providing the EU trade mark number and details of any interested parties.

Do I automatically get a UK trade mark if my EU application has been submitted but is pending?

If your EU trade mark application is pending on 1 January 2021 and you wish to secure protection in the UK, you will need to apply to register a separate UK trade mark. Online trade mark applications cost £170 plus £50 for each additional class. You will have until 30 September 2021 to apply to register your mark in the UK to retain the earlier filing date of the pending EU application. This is important because protection is effectively backdated to the application date not when the date the registration is granted.

UK trade marks

From 1 January 2021, individuals and businesses based in the UK can still apply for and hold an EU trademark as before, however the EU trademarks will no longer provide protection in the UK. Where previously you could apply for an EU trademark to protect your brand in the EU and the UK, any holders requiring the same level of protection for future marks will need to make two separate applications.

As discussed above, holders of an EU trade mark granted after 1 January will have until 30 September 2021 to register their comparable UK mark and secure their earlier EU filing date. If you apply for a new UK trade mark before the end of September, you will need to consider the risk of emerging UK comparable marks which may have priority.

Service address

Individuals and businesses not based in the UK will require a representative with a UK address for service for any application filed with the UK intellectual property office. It is important that you check you have the right representation in place. As a UK centric law firm, we are able to file UK trade mark and design applications, deal with renewals, revocations, oppositions and issue and defend infringement claims.

Copyright protection

The majority of UK and EU copyright works (such as books, films and music) will still be protected internationally by a number of treaties which are not affected by Brexit. This applies to works made before and after 1 January 2021.

Database rights

There are two types of intellectual property protection for databases: database rights and copyright. Copyright protects the original presentation or arrangement of material in a database whereas database rights protect the data itself.

Database rights that existed before 1 January 2021 will not be affected by Brexit.

However individuals and businesses in the UK are no longer eligible to receive or hold database rights in the EEA for databases created on or after 1 January 2021. To remedy this the UK has created its own version of database rights but protection is limited to the UK. You will therefore need to consider alternate means of protecting your data in the EU such as licensing agreements.

Domain names

Subject to specific exemptions, businesses not established in the EU and individuals who are not resident in the EU are no longer eligible to hold an .eu domain name.

My .eu website has been suspended, what can I do?

All UK registrants of an EU domain name who do not meet the eligibility criteria will see their websites moved to “suspended” mode until 31 March 2021. If you hold an .eu domain name, please do check whether you meet the eligibility criteria as soon as possible. You will need to update your contact details on the registry manager for .eu domains (EURid) to demonstrate establishment or residency in the EU (if applicable) to reinstate your website.

If you do not meet the eligibility criteria, you will need to migrate to a different domain. If no action is taken, the website will be moved to “withdrawn” from 1 April 2021 and will not support any service. All domain names with withdrawn status will be revoked on 1 January 2022 and subsequently available to general registration. If you require any assistance our IT solutions arm will be happy to help.

Litigation

Except where proceeding were already underway on or before 31 December 2020, UK courts can no longer pass judgment on EU trade marks or designs. Even where cases can continue to be heard in the UK, certain remedies will no longer available and remedies granted will only apply to the comparable UK rights. It is therefore particularly important to focus on what outcome you are trying to achieve and whether the appropriate remedy is available. For example, if someone is infringing your brand and you are seeking a UK and EU-wide injunction you may need to issue proceedings in both the UK and an EU Member State.

This article is provided by Burlingtons for general information only. It is not intended to be and cannot be relied upon as legal advice or otherwise. If you would like to discuss any of the matters covered in this article, please contact Lydia Mills or write to us using the contact form below.

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Lydia Mills
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