The Impact of Brexit on Your IP: Key Considerations + Action Steps
Smart SummaryUK
trademark and patent protection for US businesses is set to be significantly
disrupted on January 1, 2021.Existing
registered EU trademarks will be automatically cloned by the UK, but pending
applications will not.Companies
should be reviewing IP clauses, auditing their assets, filing new applications,
and obtaining physical addresses in the UK to remain protected.On
the heels of “Brexit,” the 2016 referendum in which a majority of UK citizens voted
to leave the European Union, the UK has been working diligently throughout the past
11 months to facilitate a smooth exit. Although the status of Brexit and the related
rules for the transition are constantly evolving, US companies doing business
in the UK must prepare themselves for the impact Brexit will undoubtedly have
on their strategy and local operations. Among
the many impacts Brexit could have on a company’s “crown jewels,” one that
could be overlooked is the effect it will have on your IP strategy. So, for
companies doing business in the UK, here are five key IP considerations to be
aware of in light of Brexit and a list of recommended actions each of those
companies should be taking.5
Brexit-Related IP Considerations to Know
Beginning on January 1, 2021, all
EU-wide trademark and Community design rights obtained under the EU regime will
no longer be protected in the UK. Going forward, to protect
rights in the UK, trademark rights holders must file an application directly
with the United Kingdom Intellectual Property Office (UKIPO), which would be
separate and apart from their application filed with European Union
Intellectual Property Office (EUIPO).Moreover, under
the Madrid Protocol, an international treaty designed to simplify and
centralize a singular trademark registration application that would then secure
protection in 90 countries (including the US and UK), rights holders must
designate the UK as a separate territory from the EU in
their applications.On December 31, 2020, whether or not
the UK and EU come to an agreement for transition, the UKIPO will automatically
place on its records all registered EU trademarks, Community registered
designs, and unregistered Community designs. These “cloned”
registrations will become a UK-equivalent registration and will be effective as
of January 1, 2021. No additional action on behalf of the current rights holders
will be necessary, as the registrations will not be re-examined by the UKIPO.Applications that are pending in the EUIPO will not be
cloned. Rights holders of pending EUTM applications and EU
designations must actively file “clone applications” with the UKIPO for
protection within 9 months in order to claim priority based upon the initial EU
application date.Brexit would not impact rights of
patent holders in the EU. The UK is a part of the European
Patent Convention, which is an international convention of members from the EU.
However, the UK has vocalized that it will not participate in the Unified
Patent Court located in EU member states or the unitary patent system, so the
impact of Brexit on a uniformed EU patent regime would need to be closely
monitored.Most copyright works are not dependent
on the EU and will still be protected in the UK and the EU, whether made before
or after January 1, 2021. However, some EU cross-border
copyright protection agreements, such as content services and databases, will
be the subject of the ongoing negotiations, and will also need to be closely
monitored.Recommended
Action Plan for US CompaniesRevisit IP clauses. If
a rights holder has cross-border agreements that reference IP protection limited
to the EU jurisdiction, it should revisit those agreements to ensure that
additional protections are included to cover IP rights in the UK, effective,
January 1, 2021.Audit your EU/UK IP portfolio. Undertake
an audit of all your current EU registrations to ensure that they are adequately
and properly cloned by the UKIPO. Our IP team is already well underway toward
working with our clients on these audits.File UK applications. If
a rights holder is seeking protection in the UK specifically through its
pending application before the EUIPO, pursuant to the Madrid Protocol, a separate
application needs to be filed in the UK.Re-file for renewal. If the
rights holder of an EU registration has already filed for a renewal before the
6-month 2021 due date, the renewed registration will not be cloned by the UKIPO.
In these cases, rights holders must file a separate renewal with the UKIPO.Obtain a UK address. Effective January 1, 2021, all new matters before the UKIPO must
have an address for service in the UK, though cloned marks that derive
comparable UK rights from existing EU registered marks are not required to have
an address for service in the UK for 3 years from transition date. As a rights
holder, you should consider a strategy that includes obtaining an address for
service in UK. Some options could include using your legal counsel’s resources
in the UK or, if you already have a presence in UK through a subsidiary or
affiliate, that local address could be used for service.A
Dedicated Brexit IP Task ForceWith
the specter of Brexit carrying such wide-ranging implications for US
businesses, our IP team has created a dedicated task force in charge of working
with international clients on their UK IP protection strategy, including
reviewing IP agreements, leading international IP audits, filing UK
applications, re-filing UK renewals, and securing physical addresses to comply
with UK regulations. You may contact one of our task force members directly to
discuss your strategy.Vinita Mehra, Director
+ Chair, Global BusinessJeff Nein, Director +
Co-Chair, Intellectual Property Jessica Skelly,
Associate Sarah Bernheisel, IP
Paralegal About our Global IP
Protection PracticeOur global IP team
regularly works with businesses and individuals to establish, monitor,
investigate and prosecute thousands of trademarks, service marks, patents and
other brand assets for our clients around the world. We offer unique, efficient
and creative cost-effective solutions that guide businesses through the
regulatory and legislative hurdles that exist in the ever-evolving global
landscape. Our services primarily include global IP portfolio management,
franchising and licensing, private investigations of infringement, and
trademark and patent litigation.
