As the final days of the Brexit transition period slip away, amongst the many things that business owners must ensure they have secured before 1 January 2021is the registration of their intellectual property rights such as trademarks, designs and copyright, Currently European and British intellectual property is protected by the laws of the European Union. The European Union Intellectual Property Office (EUIPO), based in Spain, was created by the European Union to offer IP rights protection to businesses and innovators across the European Union (EU) and beyond, managing the registration of the EU trademarks and the registered Community Designs.
Giambrone's lawyers in the intellectual property and media team point out, every aspect of intellectual property is both valuable and vital to an organisation. However, there are certain aspects that, if control of which is lost, can cause serious, sometimes fatal damage, to a company. A trademark, in particular, is the unique visual symbol, in any form, by which an organisation is recognised and must be rigorously protected.
Once the transmission period has ended and the UK is completely separated from the European Union, the law of the European Union will no longer be applicable in Britain. Any aspect of intellectual property registered with European Union Trademark (EUTM) and Community Designs Regulations will cease to apply in the UK.
EU trademarks registered before 31 December 2020 can retain legal protection in the UK by obtaining an equivalent trademark registration in the UK which will replicate priority, application, concession as well as the same renewal dates that applied to the previous EUTM. Once obtained, there will be automatic registration on the UK Intellectual Property Office (UKIPO) without cost and the identifying number will be preceded by the code UK009. Unless requested by an agent based in the UK and the required fee paid a certificate will not be issued. Certification will take approximately one to two months.
An EUTM that expires between July 2020 and December 2020 if it is not renewed the UKIPO will produce an equivalent mark as if it had been renewed but it will appear on the register as if it had expired. If, within a six month period of grace the equivalent mark will be automatically renewed with no charge.
Businesses, organisations or individuals that have applications for EUTMs which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection. In this case, UK application fees will be payable, and the application will be subject to UK examination and publication requirements.
Under the terms of the Withdrawal Agreements, similarly to trademarks EU the UKIPO will create a Registered Community design (RCD) for all EU registered designs retaining all the same legal status and the same renewal dates. There will be no need to file an application or pay any fees. A certificate of registration will not be provided. However, it has been suggested that a screenshot could be taken and used as evidence of registration.
Any outstanding applications for an RCD will have a nine-month period of grace within which time an application can be made in the UK but a fee will be payable.
International Trade Marks and Designs
The Withdrawal Agreement provides for international trademarks and designs which are assigned to the EU to continue to be protected. A comparable UK trademark for every international trademark protected under the EU will be re-registered on 1 January 2021. Pending applications will have nine months to register with application fees chargeable.
Copyright is slightly different due to the international treaties on copyright that the UK is party to which, in turn, delivers equivalent protection to EU copyright works and applies to works created both before and after 1 January 2021. Copyright arrangements currently applying cross-border to EU member states exclusively will stop when the transition period ends.
Provision has been made for business owners to ensure that their intellectual property is retained and protected after the transition period and there are lengthy periods of time and procedures to assist a business to retain the intangible assets. Giambrone's lawyers in our London, Barcelona and Milan offices have extensive experience in advising and assisting companies to safeguard this essential and valuable part of their businesses.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.