Trade Marks and Design Rights Following Brexit - A Little Clarity

It will not be news to anyone that the UK is now in a post-withdrawal agreement “Transition Period”. We now have a situation where there is, in essence, 11 months of status quo.

Trade Marks

EU Trade Marks (EUTMs) will continue to cover the UK. 

At the end of this period, i.e. on 31 December 2020, owners of registered EUTMs will be granted a new UK trade mark. In effect, this will be a ‘clone’ of the EUTM with no action necessary or cost incurred on the part of the holder. Registration Certificates will not be issued but details will be available on the UK IPO website. This cloned UK trade mark will not be re-examined and will be treated as if the trade mark had originally been filed as a UK mark. It will be renewable separately from the EU right. This same mechanism will be adopted for EU designations (where a Statement of Grant of Protection has been issued) of International Registrations.

In terms of pending EUTM applications, at the expiry of the Transition Period, owners will have nine months to file a comparable UK application which will be subject to the usual application process and filing fees. Provided this application is identical to the EUTM application, it will benefit from the same filing and priority dates.

Domestic UK trade marks will be unaffected.

Bear in mind that where an EUTM’s use has been confined to the UK, consideration should be given to expanding use of the mark into the remaining 27 EU countries. This is because the EUTM will become vulnerable to cancellation five years after the UK exits the EU, if its use is limited to the UK. Vice versa, the cloned UK trade mark right will be vulnerable, if use of that mark is only outside of the UK.

Design Rights

Designs can be defined as an object’s internal or external shape or configuration (of the whole or part). Designs have been protected in the UK by registration since 1949, with unregistered designs getting specific protection in the Copyright, Design and Patents Act 1988, whereas the European Community protection for Unregistered Community Designs (UCDs) came into force in 2002, with Registered Community Designs (RCDs) obtainable from 2003. The UK and Community design regimes were never fully harmonised and there are differences in what is protected and for how long between registered and unregistered designs and between the UK and EU protections. 

Registered Community Designs

After the Transition Period ends, new RCDs will not provide protection in the UK. Similar to the position for trade marks though, holders of an RCD registered before the end of the transition period will become a holder of a UK registered design right which will be known as a “re-registered design right”.

In terms of pending RCDs at the expiry of the Transition Period, owners will have nine 
months to file a comparable UK application.

Unregistered Community Design Rights

New UCDs will no longer have protection in the UK after the Transition Period. Designs that are protected as UCDs before 31 January 2021 will remain protected and enforceable in the UK for the remaining period of their relatively ephemeral three year life as a continuing unregistered design (CUD). The UK will introduce an equivalent in the UK to the UDR known as a Supplementary Unregistered Design right (SUD) which will replace UCDs for the UK.

UK Registered Design Rights 

UK registered design rights will change slightly, with the qualifying criteria changing from EU resident individuals and businesses disclosing the design in an EU member state to UK (or qualifying country) resident people or businesses formed under the laws of the UK (or qualifying country). The qualifying countries are ones with a reciprocal arrangement e.g. Bermuda and New Zealand.

UK Unregistered Design Rights

These will continue after 1 January 2021 and will function alongside CUDs and SUDs

For now, IP owners should think carefully about the protection they need for any new trade marks and designs in the post-Brexit IP world. The transition period will be over before you know it.