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Brexit: Where Are We Now on the Protection of EU IP Rights in the UK after Brexit

While COVID-19 has been running us all ragged, we cannot lose sight of another globally impactful event — Brexit. The UK-EU Withdrawal Agreement came into effect on January 31, 2020 and provides for the implementation of registered EU intellectual property rights into UK law after Brexit. What does it say and what do EU and UK IP rights holders need to do now?

Trademark Rights

All existing registered EU IP rights will be automaticallyrecognised under UK law, free of charge and without any additional required application. This means that all EU trademarks, EU designs and EU plant variety rights will be granted comparable UK rights. This includes international trademarks or designs that designate the EU. Geographical indications and designations of origin will also be recognised. Therefore, names such as Parma Ham and Feta Cheese will still be protected in the UK.

Trademark Renewals and Cancellations 

The new UK IP right will maintain the same date of filing, and therefore the same renewal dates, as the comparable EU right. Therefore, if you have an EU right that will expire shortly after December 31, 2020 (the end of the transitional period) you should consider renewing it before December 31, 2020 to avoid having to pay double renewal fees. 

If an existing IP right is declared null and void or invalidated in proceedings which have commenced before the end of the transitional period, it will automatically be declared null and void in the UK, unless the grounds for invalidation are not valid in the UK.

Pending Trademark Applications 

If you have an EU application applied-for during the transitional period and still pending at the end of the transitional period, you will have nine months (six months for plant variety rights) to apply for a corresponding UK registration.

European Patents 

EU patents are not affected by Brexit. EU patents that designated the UK will continue to be maintained and enforced under the same protections in the UK as pre-Brexit. 

Wider IP-Related Protections in the UK 

Owners of IP rights in UK databases will have their rights automatically protected in UK law to the same standard as under existing EU law (even where the EU law is broader than the UK law).

In addition to registered rights, the UK will grant protection under UK law for the holder of an unregistered EU design right which has been published before the end of the transitional period. There is no current agreement about how such designs will be treated after the transitional period.

Conclusion

In summary, hopefully this will be a smooth transition, but nothing is certain and EU unregistered design rights that are created after the transitional period may no longer be valid in the UK, which is a concern particularly to the fashion industry. To avoid possible post-transitional period headaches for future applications, you should consider starting to apply for both EU and UK rights (if you have not begun doing so already).

© 2020 Vedder PriceNational Law Review, Volume X, Number 162

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About this Author

Robert S. Rigg, Vedder Price Law Firm, Intellectual Property Attorney
Shareholder

Robert S. Rigg is a Shareholder and Co-Chair of Vedder Price's Intellectual Property Litigation practice group. He concentrates his practice in all areas of intellectual property, including patent, trademark, copyright and trade secrets law with a primary focus on patent infringement. He has a special focus in the areas of complex patent infringement litigation of all types of technology, including heavy machinery, pharmaceutical, chemistry and computer technology as well as business method patents.

312-609-7766
Allison M. Haas Intellectual Property Attorney Vedder Price Chicago, IL
Associate

Allison M. Haas is an Associate in Vedder Price’s Chicago office, and a member of the firm’s Intellectual Property team.

She focuses her legal practice on assisting intellectual property owners in managing their portfolios and assisting clients in patent, trademark and copyright matters. As a registered patent practitioner, her technical expertise and experience in all phases of intellectual property prosecution and litigation allows her to advise her clients on securing and defending intellectual property rights in a wide variety of high-tech industries.

Ms. Haas holds a degree in Computer Engineering from the Milwaukee School of Engineering, and received her law degree from the Chicago-Kent College of Law. Prior to law school, she worked as an Application Development Engineer for a major commercial real estate firm working with clients to create artificial intelligence-driven hardware and software solutions for greener intelligent building systems.

While in law school, Ms. Haas served as a Submissions Editor of the Journal of Intellectual Property and was a fellow of the Chicago Intellectual Property Colloquium. She also volunteered with the Chicago-Kent Patent Hub to assist with pro bono patent prosecution for low-income inventors. Additionally, she spent a summer as a judicial extern for Judge Susan E. Cox of the U.S. District Court for the Northern District of Illinois.

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