How will Brexit impact your trademarks and other IP rights?

What you need to know before December 31, 2020

The United Kingdom left the European Union on January 31, 2020. The UK is presently in a Brexit transition period, during which it has remained within the EU’s legal framework with regard to many issues, including trademark and design patent matters. However, the Brexit transition period will end on December 31, 2020.

JMBM has been closely tracking Brexit and its impact on intellectual property rights and is prepared to assist clients in safeguarding their rights as the Brexit transition period comes to a close. Among other things, existing EU registrations will automatically be cloned into UK registrations. These new registrations will need to be identified, and relevant dates will need to be docketed. Applications pending with the EU Trademark Office at the close of the transition period, however, will not be cloned; instead there will be a nine month “grace period” during which pending EU applications can be re-filed in the UK. If filed during this period, the UK applications will enjoy the same priority date as the pending EU application. However, third parties will have an opportunity to oppose these applications, even if they did not oppose the original EU application.

A similar procedure will apply to pending and registered EU design applications: for pending EU design applications, applicants will have the opportunity to file a UK design application within nine months from December 31, 2020 and will be able to retain the priority date of the original EU design application. Registered EU designs will automatically be cloned into the UK register.

Conversely, Brexit will not impact European utility patents and pending applications because these are filed and granted through a centralized organization separate from the EU, namely, the European Patent Office (“EPO”). The EPO was established through a multilateral treaty known as the European Patent Convention, of which the UK remains a member. Accordingly, granted EPO utility patents that were validated in the UK will remain in force and pending utility applications, once granted by the EPO, can still be validated in the UK even after Brexit.

Finally, Brexit may impact the scope of agreements which are, by their terms, enforceable within the EU. The impact of Brexit on such agreements will depend on the specific language of the agreement. Agreements should be reviewed with this possibility in mind.

We stand ready and able to assist clients to navigate the close of the Brexit transition period. In the coming weeks, we will contact clients to provide specific advice on steps they may wish to take to protect their rights. Meanwhile, we are available to answer any questions that may arise.

JMBM’s Intellectual Property Group represents entrepreneurs, family-owned businesses, middle-market companies, startups, universities and the FORTUNE 500, handling patents, trademarks, copyrights, domain names, trade dress, trade secrets, and related licensing and litigation. Our approach is aggressive and efficient, and we keep a keen focus on helping clients achieve their goals.

This update is provided to our clients, business associates and friends for informational purposes only. Legal advice should be based on your specific situation and provided by a qualified attorney.