Brexit: what will finally happen on January 1, 2021?

• English

There are just 75 days left until the end of the Brexit transition period on December 31, 2020. Although the negotiations between the EU and the UK government on a free-trade deal are still ongoing, it is almost certain that the end of the transition period will not be extended.

Some aspects of the future relationship between the EU and UK remain unclear while these negotiations continue, but luckily most of the issues concerning registered IP rights are clear. Most importantly, the Withdrawal Agreement between the EU and UK puts in place measures to ensure continued protection for all registered EU trademarks (EUTMs) and registered Community designs (RCDs) in the UK from January 1, 2021 – whatever the outcome of the current discussions.

The challenge for trademark and design portfolio managers is to ensure they have their house in order and do not risk losing rights after this date. Our webinar with Lexology addresses how to prepare for the end of the transition period, what is likely to change in day-to-day IP management and what steps you should consider taking now. This practical, timely webinar is presented by Deborah Brincat, Key Account Manager for Dennemeyer Group and formerly a member of the Paris trademark department of Procter & Gamble.

A guide to what is changing

Following the referendum vote to leave the EU in 2016, the UK officially ceased to be an EU member state on January 31, 2020. The Withdrawal Agreement provided for a transition period lasting until December 31, 2020. During this time, very little has changed – including regarding EUTMs and RCDs.

However, from January 1, 2021, these EU rights will no longer cover the UK. Instead, to ensure continuity, the UK IPO will automatically create comparable UK rights derived from the EU rights, which will retain the original priority / filing dates. These UK trademark and design rights will be created free of charge. For international trademark registrations, the UK IPO will create a comparable IR trademark for each designation that has been protected in the EU.

To give an idea of the impact these changes will have, in 2018, there were 1,445,769 EUTMs in force and 704,964 UK trademarks, so the UK trademark register could roughly triple in size on January 1. The equivalent figures for registered designs in 2018 were 223,492 RCDs and 75,476 UK registrations. (The figures are taken from the WIPO IP Statistics Data Center and are the most recent available.)

However, the arrangement for pending applications is different: these will not be automatically extended. Instead, there will be a nine-month window for applicants to file in the UK and benefit from the original priority / filing date.

What the webinar covers

The changes resulting from Brexit will affect every company that holds EUTMs or RCDs or has applications pending, and IP portfolio managers need to make sure they are prepared. This webinar addresses the key issues that they should consider now and after January 1.

Some of the actions required now include:

• Ensuring records are up-to-date, both internally and at the EUIPO
• Deciding whether to opt-out any registered rights
• Making sure the proper representatives and contact details are listed (as the rules on representation for UK nationals will change on January 1)

Future challenges will also include managing renewals for the new comparable UK rights, keeping good records of use both in the EU and UK, and monitoring pending court and IP office proceedings, including cancellations and oppositions.

Pick up tips and avoid traps

The end of the implementation period will see significant economic and legal changes in many areas, regardless of whether the UK and EU agree on a deal. Whatever the outcome of negotiations between now and the end of the year, the UK will be leaving the EU single market and customs union. Brexit will also impact travel between the UK and EU and the ability of UK citizens to live and work in the EU.

Amid all these adjustments, businesses should not overlook the significant measures affecting IP rights. To minimize any problems, it is vital to make sure you know what changes are coming, how they affect your IP portfolio and what decisions need to be made.

The webinar provides practical tips and helps identify possible pitfalls for all trademark and design owners. It also touches on other relevant matters, such as exhaustion of rights, customs recordals, .eu domain names, updating agreements and recordal of licenses. 

The measures put in place in the Withdrawal Agreement are designed to ensure a smooth transition for IP owners, and the creation of comparable UK rights is a transparent and straightforward procedure. However, rights owners need to ensure they understand how it works and what steps they need to take to ensure that their systems are accurate and there is no inadvertent loss of rights. This webinar offers the information and guidance they need at this critical time. Watch the recording here! 

Additional information on the impact of Brexit on IP rights is available on the UKIPO, EUIPO and WIPO websites.