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Intellectual property in the UK after 1 January 2021

The transition period ends on 31 December 2020. On 1 January 2021 there will be changes to UK intellectual property law to ensure the smooth departure from EU IP systems.

The following is a summary of the key changes.

Use of representatives and address requirements to represent

From 1 January 2021, UK attorneys will be unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO). UK trade mark owners will need to appoint an EEA attorney to represent them on new applications and proceedings before the EUIPO.

1.1  Tradeмarks

Comparable UK trademark rights will be created at the end of the transition period under the terms of the Withdrawal Agreement. On 1 January 2021, The IPO will create a comparable UK trademark for every registered EU trademark (EUTM). Each of these UK rights will:

You will not:

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. Our digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding EUTM application.

1.2  Designs

Re-registered UK designs will be created at the end of the transition period under the terms of the Withdrawal Agreement. On 1 January 2021, the IPO will create a re-registered design for every Registered Community design (RCD). Each of these rights will:

You will not:

Businesses, organisations or individuals that have applications for RCDs which are either not registered or have deferred publication 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 requirements. Our digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding RCD application.

1.3 Unregistered Designs

Unregistered community designs that arise before the end of the transition period will continue to be protected in the UK for the remainder of their three-year term through continuing unregistered designs. From 1 January 2021, a supplementary unregistered design (SUD) will become available in UK law.

The SUD will provide similar protection to that conferred by the unregistered Community design, but for the UK only. The SUD will be established by first disclosure in the UK or another qualifying country. First disclosure in the EU will not establish a SUD right. It could destroy the novelty of the design should you later seek to establish UK unregistered rights.

Business will need to consider carefully where to disclose their products to ensure they have adequate protection in their most important market.

1.4 Patents

You can apply for a European patent through us or direct to the European Patent Office (EPO) to protect your patent in more than 30 countries in Europe, using the (non-EU) European Patent Convention (EPC). As the EPO is not an EU agency, leaving the EU does not affect the current European patent system. Existing European patents covering the UK are also unaffected. European patent attorneys based in the UK continue to be able to represent applicants before the EPO.

1.5 Changes affecting SPCs due to the Northern Ireland Protocol

Due to regulatory changes for marketing authorisations there are some changes to the SPC application process which will come into effect from 1 January.

You will need to check whether your marketing authorisation is valid for the whole of the UK, or just Northern Ireland or Great Britain. An application for an SPC must still be filed with the IPO within six months of your first authorisation.

1.6 Parallel trade between the UK and the EEA

The IP rights in goods placed on the UK market by, or with the consent of the right holder after the transition period may no longer be considered exhausted in the EEA. This means that businesses parallel exporting these IP-protected goods from the UK to the EEA might need the right holder’s consent. The IP rights in goods placed on the EEA market by, or with the consent of the right holder after the transition period will continue to be considered exhausted in the UK.

This means that parallel imports into the UK from the EEA will be unaffected.

1.7 Copyright

Most UK copyright works (such as books, films, and music) will still be protected in the EU and the UK. This is because of the UK’s continued participation in the international treaties on copyright. For the same reason, EU copyright works will continue to be protected in the UK. This applies to works made before and after 1 January 2021. Current cross-border copyright arrangements unique to EU member states will stop at end of the transition period. These include cross-border portability of online content services, copyright clearance for satellite broadcasts, reciprocal protection for database rights and the orphan works exception.

1.8 Geographical Indications

A geographical indication is an IP right used on products that have a specific geographical origin. The Department for Environment, Food and Rural Affairs (Defra) leads on agricultural and food Geographical Indications (GIs) in the UK. They have published guidance [1], including the new UK GI schemes which will come into force on 1 January 2021. The IPO has worked with Defra to ensure the new schemes are compatible with the wider IP framework. This will ensure the existing relationship between trademarks and GIs is maintained.

The news above is for information purposes only. It is not a (binding) legal advice. For a thorough understanding of the subjects covered and prior acting on any issue discussed we kindly recommend Readers consult Ilieva, Voutcheva & Co. Law Firm attorneys at law.