ARE YOU READY FOR BREXIT? Consequences on trademarks, patents, designs and geographical indications

15 January, 2021
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Industrial Property
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Irene Moneo


2021 is here and with it, the end of the transitional period for the United Kingdom to leave the European Union. With it, the consequences of the abandonment of the country from the institutions of the Union and the single market accrue, for citizens and companies.

In this sense, below, we offer a short summary of the effects that Brexit will have on community industrial property rights, starting next January 1st.

BRANDS AND DESIGNS

Holders of a European Union trademark or design will automatically become holders of a United Kingdom trademark or design, without the need to submit an application or pay a fee. In addition, the new British rights will retain the application date for the EU title, as well as its priority date. That is, they will retain their seniority.

In contrast, trademarks or designs applied for during 2020, but not granted before January 1, 2021, will not automatically become British titles. Once granted, in the event that the owner of said European trademark or design has an interest in its duplication in a British title, the latter will have a period of nine months to present the application to the Intellectual Property Office of the United Kingdom and claim the priority of the Union mark or design. Said request will be accompanied by the payment of a fee.

Regarding trademarks, the renewal date will be the same as that of the original European Union title. Therefore, trademarks to be renewed in the European Union in 2021 will also have to be renewed in the UK on the same date. Likewise, expiration cannot be declared due to lack of use of the brand, due to lack of use during the transitory period. In this sense, it will not compute the period of non-use prior to January 1, 2021.

Unregistered designs that have been disclosed prior to December 31, 2020 will continue to be protected in the UK through the supplementary unregistered design (SUD) for the remaining period of protection, within three years of protection offered by European legislation. As of today, there are no UK regulations protecting unregistered designs, so it is not clear what will happen to unregistered designs disclosed as of January 1, 2021. While the UK is has promised to protect them for three years. Of course, the disclosure in the European Union of a design will destroy the novelty requirement that is required in the United Kingdom for the registration of a design.

On the exhaustion of these rights in the European Union (the resale of products), the products introduced in the European market before December 31, 2020, will be considered exhausted, so they can be re-marketed both within the United Kingdom and within the European Union, without the authorization of the owner. In contrast, products marketed as of January 1, 2021 in the United Kingdom will not be considered out of stock within the territory of the European Union. On the contrary, if as of the aforementioned date, the product is marketed in the territory of the European Union, the United Kingdom will consider the right exhausted and it may be re-marketed in the British territory without the authorization of its owner.

PATENTS

The European Patent Office is not a body of the European Union. Therefore, those patents that are valid in the United Kingdom on January 1, 2021, will continue to be without being affected by Brexit.

Supplementary protection certificates (SPC), on the other hand, will be affected as it is a right solely regulated by European Union. In this sense, certificates presented before December 31, 2020 will have the same level of protection as that granted by the European Union. On the contrary, SPCs submitted as of January 1, 2020 will have the protection that the UK regulations create for this purpose.

PROTECTED DESIGNATIONS OF ORIGIN, PROTECTED GEOGRAPHICAL INDICATIONS

AND TRATIONAL SPECIALTIES GUARANTEED

Protected designations of origin, protected geographical indications and traditional specialities guaranteed will continue to be protected in the UK through the titles that the country has undertaken to create. The level of protection conferred by the aforementioned titles will be the same as that conferred by the European Union.

The British entity competent in this matter, the Department for Environment, Food and Rural Affairs (DEFRA) has established that products produced and registered before January 1, 2021, may continue to use European logos. On the contrary, products produced and registered after January 1, 2021, for marketing in the United Kingdom, must use the British symbols and that are homologous to the existing European ones. In addition, these may be accompanied by the symbols of the European Union.

This commitment will be in force until there is an agreement that regulates relations between the European Union and the United Kingdom. Consequently, these circumstances may change.

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