Webinar: How TM lawyers should prepare for Brexit

The full impact of Brexit will be felt when, on December 31, 2020, the transitional period of the UK’s departure from the European Union (EU) comes to an end—raising questions for IP rights owners and practitioners alike.

WIPR, in association with  HGF, considered what the likely ongoing impact of Brexit will be for UK and EU trademark practitioners in a  webinar hosted on Wednesday, December 16.

Deal or no deal

As Lee Curtis, partner at HGF, explained, Brexit has technically already happened: the UK left the EU on January 31, 2020. What was negotiated at that time was a legally binding international treaty, known as the Withdrawal Agreement, and this included provisions for a transitional period to continue until December 31, 2020.

Until then, the UK is still a part of the EU’s trademark and designs system, Curtis said, but as of January 1, 2021, it will not be. Currently, negotiations are ongoing, and it is unknown whether the UK and EU will reach a free trade agreement to commence at the start of 2021. But, according to Curtis, most (if not all) of the IP provisions that we should be aware of are contained in the Withdrawal Agreement.

“A lot of the principles relating to UK trademark and design law will stay the same,” Curtis said. Therefore, deal or no deal, there is some level of certainty for IP owners and practitioners.

Cloning after Christmas

One question which has been much asked is, “what will happen to EU designs and trademarks once the transition period is over?” Curtis provided the answer to this question: “All EU registered designs and trademarks will be cloned, automatically and for free, into corresponding UK designs and trademarks. Trademark owners don’t have to do anything, and the same applies for designs.”

This means that the owner of an EU trademark (EUTM) will become the owner of a new, UK national right. It will maintain its existing priority, seniority, and renewal date. Curtis warned that, for pending rights, this is not the case.

If, as of December 31, 2020, an EUTM is pending and no final decision has been made, the applicant will have nine months—until September 30, 2021—in which they will be able to apply to clone that EUTM application into a corresponding UK one.

This process is not automatic or free, Curtis said, and the usual application costs will apply. He urged listeners filing applications now to file duplicate EUTM and UK trademark applications: “EU design and EUTM applications filed now won’t be granted by the end of the transition period.”

A further consideration is that of renewal. When the renewal of an EUTM is due after the end of the transition period, the cloned UK trademark must be renewed separately to that of the EUTM; Curtis suggested that trademark owners and IP practitioners consider this when calculating renewal costs.

Narrowing of unregistered designs

An unregistered design right in the EU protects shapes, configurations, colours, lines, and contours and, like EUTMs and EU designs, these EU rights will no longer cover the UK after the transition period ends. However, unlike that of EUTMs and EU designs, they will not be cloned as such.

Curtis explained that a UK unregistered design right only applies to shape and configuration, making it much narrower right than the comparable EU right. As such, there is potentially a “hole in the protection” of unregistered design rights as of January 1, 2021.

“To fill that hole, the government is going to create two new forms of design right,” said Curtis. The first will be the UK continuing unregistered design right. Where the design has been disclosed in the UK and in the EU, the design will continue to enjoy protection in the UK as an EU unregistered design right for the remainder of its term. This will be a maximum of three years.

The second is the supplementary design right, which will come into force after the transition period and will apply to designs which are disclosed for the first time after December 31, 2020.

Curtis said that this supplementary right will mirror the scope of the EU unregistered design right and run in parallel with the UK continuing unregistered design right. It will only come into force when the design is disclosed for the first time in the UK or a limited number of qualifying states (such as Hong Kong). Going forward, Curtis suggested that simultaneous disclosure should be considered to ensure that design rights are gained and protection afforded in the UK and the EU at the same time. For example, if making a disclosure at a fashion show or a trade show, it may be worth live streaming the disclosure around the world to ensure that you are protected.

Jurisdictional shift

From January 1, 2021, the UK will no longer be covered by the jurisdiction of the Court of Justice of the European Union (CJEU). Curtis said that whilst existing case law will apply to the UK even after the transition period ends, in time, case law from the UK and the EU is likely to diverge. “Although they may well be guided by the decisions of the CJEU, our courts will not be bound by them anymore,” he explained.

The highest court will therefore be the Supreme Court of the UK, and practitioners will need to look towards that rather than the CJEU for precedent when it comes to decisions.

Remember representation

Curtis reminded listeners that, after the end of the transition period, all matters being referred to the UK Intellectual Property Office (IPO) must have a UK address for service. This means that a UK representative will need to be engaged, if one is not already, from January 1, 2021.

This will apply to all matters presenting at the IPO, with the exception of matters relating to cloned registrations. To listen to the full webinar, “Brexit, trademarks and designs: the end of the beginning? Or just the beginning”, click  here.

If you’re interested in participating in a webinar, please contact Sarah Gooding on  sgooding@newtonmedia.co.uk. Finally, to listen to LSIPR's and WIPR's back catalogue,  visit our BrightTALK channel.