Brexit

Intellectual property in a post-Brexit landscape

"While Brexit will inevitably bring changes to the UK's relationship with other European countries, your relationship with Potter Clarkson will not change in any way. It will not disrupt the services we provide to you – it is business as usual."

Steve Smith, Managing Partner

Potter Clarkson Group

With the withdrawal agreement ratified in late 2019, the UK formally left the European Union on 31 January 2020, entering an additional 11 month transition period. With the transition period now over, it is important to consider how you will secure and maintain protection - both in the EU and the UK.

Navigating the changes to the European IP landscape does not have to be complicated. We have developed this hub to provide you with an overview of the UK’s position regarding intellectual property in a post-Brexit landscape, along with our recommendations to ensure your rights remain protected.

As a pan-European intellectual property law firm, with offices and attorneys in the UK and in several EU-member states, our ability to support clients in all aspects of IP is completely unaffected by any Brexit-related changes. The key benefits of working with us are:

Our People

The firm has a significant presence in mainland Europe, with manned offices in Stockholm, Lund, Copenhagen and Aarhus. Teams led by European Trade Mark and Design Attorneys Jesper Sellin, based in our Stockholm office, and Lars Karnøe, based in our Aarhus office, are highly experienced in representing clients before the European Union Intellectual Property Office (EUIPO) and EU court systems. Together with the fact that our ability to represent parties at the European Patent Office is completely unaffected by Brexit, this enables us to handle all your IP needs.

Our Accolades

We are recognised as a Gold Standard IP firm by the Financial Times and won the coveted UK Trade Mark Prosecution Firm of the Year award for 2020 and 2021 from Managing Intellectual Property. These accolades serve as important and reassuring evidence for our clients that they are working with an industry-leading team. 

Our Value

Working with one firm - experienced in both UK and EU jurisdictions - ensures a strategic and cost-effective approach to protecting your IP rights in all your key markets.

Existing UK national intellectual property rights are unaffected by the UK leaving the EU. This means that any UK patents, supplementary protection certificates (SPCs), designs and trade marks, as well as both European patents and International (Madrid Protocol) Trade Mark Registrations that designate the UK, continue to apply in the UK. The UK is also still available as a designated state of a European patent application and an International (Madrid Protocol) Trade Mark Registration.
Brexit has no impact on European patents and pending applications or the way in which UK-based European patent attorneys interact with the European Patent Office (EPO). The EPO is not an EU institution, which means that the EPO, and the rules and regulations under which it operates in granting European patents, are independent of the EU. Several non-EU countries are already members, Norway being a notable example. Consequently, our ability to apply for, prosecute and challenge European patents at the EPO remain unchanged.
UK SPCs (including those extended by a paediatric extension) that have already taken effect remain in effect after 31 December 2020, and SPCs granted but not yet in force will come into force at the end of the associated patent term, as normal.

Any pending UK SPC application will continue to progress as normal, and from 1 January 2021, patentees can still apply for an SPC and paediatric extension in the same way before the UKIPO. We can assist with this, as before. For new paediatric extension applications, it will no longer be necessary to provide evidence of authorisations in all territories of the European Economic Area.

Marketing authorisations granted by the European Medicines Agency (EMA) will be converted into equivalent UK authorisations from 1 January 2021, and so for SPCs based on EMA authorisations, applicants may be asked to provide information on the converted UK authorisation so that it can be recorded on the register. We can assist with this.

We can also advise on SPC and related Marketing Authorisation procedures in relation to Northern Ireland.
As of 1 January 2021, EU trade mark registrations and Registered Community designs no longer extend to the UK. The UKIPO created equivalent UK ‘cloned’ rights of existing EU trade mark and design registrations which were already registered on 31 December 2020. For trade mark and design applications that were pending at the EUIPO on 31 December 2020, there was a 9-month window to convert those applications into corresponding UK applications before the UKIPO, along with the payment of a UK filing fee. The 9-month window during which such applications could be filed, and the earlier priority date of the EU trade mark application claimed, expired on 30 September 2021. Please contact us if you would like any information in relation to this.
From an economic perspective, the UK will always be an important jurisdiction and the ability to enforce monopolies and/or recover damages flowing from infringing activities will remain commercial imperatives. Similarly, the speed of resolving contested proceedings, the quality of our judges and practitioners and the wide spectrum of relief available from the English Courts (as well as the language of proceedings) will continue to make the High Court a forum of choice for domestic and international litigants alike.

Commercial contracts will continue to be drafted in English in many instances, as the international language of commerce, just as English law and jurisdiction will remain an attractive choice for parties seeking to reach an acceptable compromise in cross border negotiations.
The UK officially withdrew from the European Union's Unified Patent Court (UPC) Agreement on 20 July 2020, so any unitary patent will not now cover the UK.

It remains to be seen what the ultimate fate of the UPC might be, with Germany attempting to pass legislation through its parliament that will allow it to ratify the Agreement and, even if Germany is finally able to ratify, two other countries having to consent to the provisional phase before final preparations for the UPC can begin. Nevertheless, as a leading European IP firm, Potter Clarkson will ensure it is positioned to act for clients wishing to use the UPC and to represent those litigating within it, if and when it proceeds, despite the UK’s decision not to take part.

For a more detailed update, please click here.
With effect from 1 January 2021:

A person may only register or hold .eu domain names if they are: An EU/EEA citizen, irrespective of where they reside; Not an EU/EEA citizen but reside in the EU/EEA; An organisation, business or undertaking established in the EU/EEA.

If you did not meet these criteria as at 1 January 2021, your domain name will have been suspended but can be reinstated with suitably updated registration data up until 30 June 2021. If, by then, the domain name has not been re-instated, it will be revoked.
New UK national register of protected geographical food and drink names.

All product names protected in the EU on 31 December 2020 are protected under the UK and EU GI schemes.

3 new UK GI logos, one for each designation of GI:
- Protected designation of origin (PDO) - products that are produced, processed and prepared in a specific area and have distinct characteristics from that area;
- Protected geographical indication (PGI) - products that are closely linked to a certain geographical area;
- Traditional speciality guaranteed (TSG) - possessing traditional name and characteristics that make it different from other products.
Existing EU/EEA database rights under the Database Directive will continue to be protected in the UK by way of the award of an equivalent UK right.

UK businesses, residents and nationals are no longer able to obtain database rights in the EU/EEA under the Database Directive - no obligation for EU/EEA states to recognise UK nationals as eligible to qualify for their rights.

Introduction of new UK database right through amendments to Copyright and Rights in Databases Regulations 1997, designed to give the same right to UK based individuals as they would have had under the existing Database Directive, for databases created after the end of the transition period.

Likewise, EU/EEA database protection will only cover EU/EEA businesses.

PROTECTING YOUR IP POST-BREXIT

EU trade mark and design registrations ceased to have effect in the UK from 1 January 2021.

The UKIPO has created equivalent UK ‘cloned’ rights of existing EU trade mark and design registrations.
All pending and future EU rights no longer extend to the UK. A separate right is required to secure protection in the UK. There is a 9-month window which expires on 30 September 2021 in which to file new UK applications before the UKIPO – applications filed before this date can claim the earlier filing/priority date of the EU trade mark application. If you require any assistance in relation to this then please contact us as soon as possible.

Potter Clarkson is here to support you through these changes. Find out how we can help you below.

'Cloned' rights registrations

To help ease the additional administrative burden – and associated liabilities – the cloned rights will bring to your portfolio, we are offering a free service to take on the full professional management of these cloned UK rights.

This will ensure deadlines are not missed, correspondence is processed effectively and contentious proceedings which rely on these cloned rights are managed appropriately. You will also benefit from the full breadth and experience of our award-winning trade marks and designs teams.

Appointing us as your UK representative is a straightforward process. Simply provide us with details of the EU rights to be cloned. Contact us via this link and we will begin the smooth transition immediately.

Pending applications

For TM and design applications that were pending at the EUIPO on 31 December 2020, there was a 9-month window which expired on 30 September 2021 to convert those applications into corresponding applications before the UKIPO in order to maintain protection in the UK. If this deadline was missed, then a new application will need to be filed in order to secure trade mark protection in the UK. Please contact us if you would like any information in relation to this.

To assist with your UK trade mark protection, Potter Clarkson is able to offer highly competitive filing costs in the UK.

Our filing fees for reporting publication and registration of an objection free application will be £300.

UK and EU filing packages

Moving forward, it will be necessary to file separate applications in the UK and EU in order to maintain protection across both jurisdictions.

We will provide competitive fee packages if you instruct us to file simultaneous UK and EU trade mark applications for the same trade mark, covering the same goods and services.

OUR BREXIT COORDINATION SPECIALISTS

For more information or if you would like to know more about the ways in which we can help your business, please contact one of our specialist Brexit coordination team members or your usual attorney.