By Carin Burchell, ECTA International Trade Committee Secretary, Publications Committee and Supervisory Board member, BRANDED! (UK)

On 28 October, the UK IPO published information about the operation of the IP system and the IPO itself after the end of the transition period on 31 December 2020 here.

Key changes will be made to the UK IP law with effect from 1 January 2021 in order to ensure a smooth departure from the EU IP systems as follows:

Trade Marks - Without any application or fee, the UK IPO will create a comparable UK trade mark for every registered EU trade mark (EUTM). Each right will automatically:

• be recorded on the UK trade mark register
• have the same legal status as if applied for under UK law
• keep the original EUTM filing date
• keep the original priority or UK seniority dates
• be a fully independent UK right which will exist separately from the original EUTM
• be able to be accessed on GOV.UK from which a screen shot can be taken as evidence of the existence of the right

EUTMs which have not yet reached registration at the end of the transition period will have 9 months to apply in the UK for the same protection. Fees will then be payable, and the application will be examined and published for opposition purposes.

Both digital and paper forms will contain a new section for claiming the earlier EUTM filing date.

Designs - Re-registered UK designs will be created automatically with no application form nor fee payable in the same way as trade marks (see above).

Any RCDs which have not yet reached registration or have deferred publication at the end of the transition period will have 9 months to apply in the UK for the same protection. UK application fees will then be payable and the application will be subject to UK examination requirements.

Both digital and paper forms will contain a new section for claiming the earlier filing date of the corresponding RCD application.

International Trade Marks and Designs - Which designate the EU will continue to have protection in the UK under the terms of the Withdrawal Agreement (WA) by creating:

• a comparable UK trade mark for every international trade mark (EU) that is protected at the end of the transition period
• a re-registered UK design for every international design (EU) that is protected at the end of the transition period

Where an international trade mark or design designating the EU has been applied for, but is not yet protected, the holder will have 9 months to apply for the same right as a UK trade mark or design. UK application fees will then be payable, and the application will be subject to UK examination requirements and trade marks publication requirements.

Unregistered Designs - a “supplementary unregistered design” (SUD) will become available in UK law. This will enable SUDs to continue to be protected in the UK (only) for the remainder of their 3 year term.

The SUD will be established by first disclosure in the UK or another qualifying country. It could destroy the novelty of the design should you later seek to establish UK unregistered rights and business will therefore need to consider carefully where to disclose their products to ensure they have adequate protection in their most important market.

Guidance for parallel trade between the UK and the EEA - The IP rights in goods placed on the UK market by or with the consent of the right holder after the transition period may no longer be considered exhausted in the EEA and may therefore need the right holder’s consent.

The Guidance also states that IP rights in goods placed on the EEA market by, or with the consent of the right holder after the transition period will continue to be considered exhausted in the UK. The Guidance also states that, in consequence, parallel imports into the UK from the EEA will be unaffected.

Comment – however, in the author’s view, since Article 61 WA states:” Intellectual property rights which were exhausted both in the Union and in the United Kingdom before the end of the transition period under the conditions provided for by Union law shall remain exhausted both in the Union and in the United Kingdom, ” and does not address the position of goods placed on the EEA market after the end of the transition period, the Guidance on this aspect therefore needs to be approached with some caution.

Actions for parallel exporters of IP protected goods to the EEA and actions for IP rights holders – suggests that parallel exporters may need to review their business arrangements, business model or supply chain based on the outcome of the discussion with the IP rights holder.

Actions for IP rights holders - Businesses that own IP rights (trade marks, patents, designs or copyright) may wish to seek legal advice if their IP-protected goods are parallel exported from the UK to the EEA.

Copyright - Most UK copyright works (such as books, films and music) will still be protected in the EU and the UK because of the UK’s continued participation in the international treaties on copyright.

EU copyright works will similarly continue to be protected in the UK – for works made before and after 1 January 2021.

Current cross-border copyright arrangements unique to EU member states will stop at end of the transition period - including cross-border portability of online content services, copyright clearance for satellite broadcasts, reciprocal protection for database rights and the orphan works exception.

Geographical Indications - The IPO has worked with Defra to ensure new schemes wheeby the existing relationship between trade marks and GIs is maintained. Business guidance on this area will be published in due course.

Use of representatives and address requirements to represent - UK trade mark owners will have to appoint an EEA attorney to represent them on new applications and proceedings before the EUIPO (UK attorneys will no longer be able to do so).

The WA however ensures that UK legal representatives can continue to represent their clients before the EUIPO in cases that are still ongoing at the end of the transition period.

The UK IPO announced on 19 November 2020 that it will amend the Address for Service rules to remove the reference to the European Economic Area. This means that any new applications for patents, trade marks and designs and any other proceedings (such as oppositions) already covered by the existing Address for Service rules, which are begun after the end of the Transition Period will have to be made by representatives with an Address for Service in the UK or Channel Islands.

However, a UK or Channel Islands Address for Service will not be required for renewals. The rules will also include transitional provisions for ongoing cases so they will not apply to actions which are lodged with the UK IPO before the end of the Transition Period.

Patents and Supplementary Protection Certificates - are also discussed.

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