Introduction : The legal breakup after Brexit

The United Kingdom’s exit from the European Union (Brexit) has dramatically altered the legal landscape, particularly in terms of intellectual property. Before December 31, 2020, intellectual property rights such as trademarks and designs were uniformly protected across the European Union, including the United Kingdom. However, since the end of the transition period, the separation of legal systems has required separate management of intellectual property rights for the UK and the EU.

This article explores the consequences of Brexit on intellectual property rights, particularly for trademarks and designs, and offers solutions to ensure their protection in this new legal environment.

Trademarks after Brexit : what has changed ?

2.1 Automatic conversion of EU trademarks into UK rights

Before Brexit, a trademark registered with the EUIPO (European Union Intellectual Property Office) protected rights across all EU member states, including the UK. Since January 1, 2021, EU trademarks (EUTMs) no longer cover the UK. To prevent trademark holders from losing protection in the UK, the UK Intellectual Property Office (UKIPO) automatically converted EU trademarks into comparable UK rights. These “cloned” marks retain the same filing and priority dates as their EU counterparts but are now governed by UK law.

2.2 European legislative reforms after Brexit

Following Brexit, the European Union continued to strengthen its legal framework for trademark protection. Regulation (EU) 2017/1001 on the European Union trademark was revised to address new challenges, particularly in the areas of cybersecurity and counterfeiting. The EUIPO implemented new tools to facilitate the monitoring of online violations and simplify dispute resolution procedures. These reforms are specific to the EU and do not directly affect trademarks in the UK, but they help reinforce the protection of EU trademarks post-Brexit.

2.3 Post-Brexit UK legislative reforms

The UK has introduced its own distinct legislation for managing trademarks after Brexit. The UKIPO has strengthened its rules to ensure that trademarks in the UK continue to receive the same protection as before, while also aligning with international standards. The UK has also adapted its mechanisms for tackling counterfeiting and IP rights violations, now independent of the EU. This legislation aims to reinforce the protection of rights in the UK and address global challenges related to counterfeiting.

2.4 EU Trademarks still under registration on December 31, 2020

EU trademark applications that were still under registration as of December 31, 2020, benefit from a priority right to file the same application with the UKIPO within nine months after the end of the transition period. This procedure allows holders to maintain their protection in the UK with the same filing date and the same goods and services as their corresponding EUTM.

Designs after Brexit: The new rules in the United Kingdom

3.1 Automatic conversion of registered Community designs

  • Community designs registered before Brexit were automatically converted into equivalent UK rights.
  • This conversion was carried out at no additional cost to the holders.
  • The priority, filing, and renewal dates of the cloned UK rights are identical to those of the original Community designs, ensuring uninterrupted protection in the United Kingdom.

 

designs brexit

Steps to ensure protection of rights in the UK after Brexit

4.1 Verification of existing registrations and separate registration

After Brexit, it is essential to ensure that intellectual property rights have been properly converted into UK rights. Holders must verify that their trademarks and designs have been cloned in the UK. For new creations, it is imperative to proceed with separate registration with the UKIPO to guarantee continued protection in the UK.

4.2 Monitoring the use of rights : Proof of genuine use

Once rights are registered in both the UK and the EU, it is crucial to monitor the use of these rights in each jurisdiction. Use of the trademark or design in the EU no longer justifies use in the UK, and vice versa. To avoid the cancellation of your rights for non-use, you must be able to demonstrate genuine use in each territory. This step is essential for maintaining the validity of your trademarks and designs in both jurisdictions.

4.3 Defending intellectual property rights

The UK has an effective judicial system for handling intellectual property disputes. In the event of infringement, holders can send a cease and desist letter to demand the cessation of the infringement. If the situation persists, they can bring the matter to specialized intellectual property courts, such as the Intellectual Property Enterprise Court (IPEC), or the Patents Court for more complex cases.

Conclusion : protecting your rights after Brexit

Brexit has separated the systems for protecting intellectual property rights between the UK and the EU. Rights holders now need to manage their trademarks and designs separately in both territories. The key to maintaining continuous protection lies in distinct registration, monitoring the use of rights, and proactively managing disputes. The legislative framework has evolved to allow efficient management of rights in both the UK and Europe.

 

Dreyfus & Associates supports businesses in protecting their trademarks and designs against the legal challenges arising from Brexit and the separate management of rights between the European Union and the United Kingdom.

Nathalie Dreyfus, with the support of the entire Dreyfus & Associates team

FAQ

1. Does my EU trademark still protect me in the UK after Brexit ?
No, since January 1, 2021, EU trademarks no longer cover the UK. However, the UKIPO has generated comparable UK trademarks to maintain equivalent protection.

2. What should I do if I have a European trademark registered before Brexit ?
European trademarks were automatically converted into comparable UK trademarks without additional fees. You now need to manage your trademarks separately in the UK and the EU.

3. How can I ensure the protection of my designs in the UK after Brexit ?
Community designs were automatically converted into UK rights. However, for new designs, you must now file a separate application with the UKIPO to ensure protection in the UK.

4. What should I do if I haven’t yet filed my trademark or design in the UK ?
You need to file an application with the UKIPO to ensure the protection of your trademark or design in the UK. EU trademarks are no longer valid in the UK since January 1, 2021.

5. What steps should I take to maintain the protection of my rights after Brexit ?
It is essential to file separate applications with the UKIPO for the UK and the EUIPO for the EU. You must also prove the use of your rights in each territory to ensure their validity.