Intellectual property: what to expect when you’re Brexiting

Following the UK’s exit from the European Union, we provide answers to some common questions concerning intellectual property that may be of immediate concern to you.

Q: Do I need to take any immediate steps to protect my intellectual property rights?

A: The UK left the EU on 31 January 2020 and is now in a transition period until 31 December 2020. During this period there will be no changes to any intellectual property rights (IPR).

Therefore, in the short term all your IPR will remain protected to the same degree that it was pre-Brexit. You do not need to take any immediate action, but we do advise you to take legal advice specific to your IPR before the end of the transition period.

Q: What will happen to my trade marks, designs and patents?

A: During the transition period, EU trade marks (EUTMs) will continue to be protected in the UK. After that, holders of an EUTM will be granted an equivalent right in the UK, without additional costs. The renewal date will be the same as your existing EUTM. However, if you apply for an EUTM after the transition period, that EUTM will no longer extend to the UK; you will need to apply, separately in the UK.

If an EUTM is still at the application stage when the transition period expires, the holder can apply for equivalent UK rights within the following nine months.

In principle the same procedure as set out above will apply to any community registered designs or any design applications.

Patents are currently dealt with by the European Patent Office. This is not an EU body, so leaving the EU will not affect the current patent system. Similarly, trade marks registered at the UK Intellectual Property Office would not be affected.

Q: Will I need lawyers in the EU too?

A: Your UK legal representative can continue to represent you in the EU Intellectual Property Office during the transition period and for any of your ongoing applications (even if they continue past 31 December 2020). After that period, we will assist with any IP issues in the UK, whilst for EU matters we have an established network of associate firms in the EU and will advise on which firm is best placed to assist with any intellectual property matters to provide a seamless service.

Q: I am involved in the import and export of IP-protected goods. What do I need to do?

A: From 1 January 2021, the law in this area changes. Exporters of IP-protected goods from the UK to the EEA should get bespoke legal advice as you may need to request permission to continue to export IP-protected goods from the holder of the IP rights in those goods.

IPR owners should also consider seeking legal advice if your goods are parallel exported to the UK from the EEA. From 1 January 2021, you will be able to refuse to permit this to continue, if you so choose.

This advice is based on the current position which may change subject to the UK government’s negotiations with the EU on the terms of the exit from the EU.

For further advice please do not hesitate to contact the intellectual property team at BDB Pitmans.