The Impact of Brexit on Your IP: Key Considerations + Action Steps
December 17, 2020
- UK 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 Companies
- Revisit 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 Force
With 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 Business
- Jeff Nein, Director + Co-Chair, Intellectual Property
- Jessica Skelly, Associate
- Sarah Bernheisel, IP Paralegal
About our Global IP
Our 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.