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29 October 2020CopyrightSarah Morgan

UKIPO releases Brexit guidance; launches AI-powered tool

The UK Intellectual Property Office (IPO) has published an overview of the key changes to IP law that will take place from January 1, 2021, when the UK’s Brexit transition period ends.

The office has urged businesses to act now to prepare for the end of transition. As part of this, the IPO is contributing to a series of webinars offering guidance for business about key changes.

From January 1, UK attorneys won’t be unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO).

President of The Chartered Institute of Trade Mark Attorneys Richard Goddard said: “Although there is no new information, it is useful to have clarification that UK legal representatives will continue to have rights of representation before the EUIPO for ongoing proceedings.

“It is really important that the issue of UK address for service is sorted before the end of this year—we are calling on the government to provide clarity to help protect our world-leading IP system and the businesses it supports.”

The IPO is considering making changes to the rules on correspondence addresses at the end of the transition period.

As previously confirmed, comparable UK trademark and design rights will be created at the end of the transition period. Those who have applications for EU trademarks which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection.

In August, WIPR  reported that nearly 100,000 newly cloned UK trademark registrations will become defunct next year following the Brexit deadline according to research by IP data provider Clarivate.

More than 1.5 million additional UK trademark registrations will be created when registered EU trademarks and EU designations of international registrations are cloned onto the IPO register.

Approximately 10% of the trademarks that will be copied over are due to expire next year because they are coming up to their ten-year expiration date, while nearly 60,000 of these cloned trademarks will expire within the first six months.

Late last week, the UK government announced a new Geographical Indication (GI) scheme to protect British producers of food and drink from IP infringement.

This scheme will replace the EU’s current rules but the EU has yet to confirm whether the new UK GIs will be recognised throughout the remaining 27 member states from January 1 onwards.

Earlier this month, the European Commission rejected reciprocity on unregistered community design protections following its negotiations with the UK government.

From January 1, a supplementary unregistered design will become available in UK law, which will provide similar protection to that conferred by the unregistered Community design, but for the UK only.

Patents remain largely unaffected as the European Patent Office is not an EU agency. However, due to regulatory changes for marketing authorisations, some changes to the supplementary protection certificate (SPC) application process will come into effect from January.

Businesses will need to check whether their marketing authorisation is valid for the whole of the UK, or just Northern Ireland or Great Britain.

A detailed overview of the changes is available here.

A new tool

The office has also launched its trademark pre-apply service, an online tool to help individuals and businesses improve their chances of successfully registering a trademark.

The artificial intelligence-powered tool is aimed at people who have not applied for a trademark before and have little or no knowledge of the application process. It’s still in public beta (meaning it’s still under development).

Customers can check if anyone already has a trademark too similar to the one they want, whether their proposed trademark is against basic trademark rules and the estimated application cost.

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