UK Trade Marks and Designs after 1 January 2021
18 November 2020
In just 44 days there will be changes to how the intellectual Property (IP) system and the Intellectual Property Office (IPO) will operate. The following covers the upcoming changes to trade marks and designs, unregistered designs, and parallel trade from the UK to the EEA as a result of the Withdrawal Agreement.
Trade Marks and Designs
At the end of the transition period, registered Community designs (RCDs) and unregistered Community designs (UCDs) will no longer be valid in the UK.
These rights will be immediately and automatically replaced by UK rights. If you own an existing right, you do not need to do anything at this stage.
From 1 January 2021, any existing RCDs, UCDs, EU, and International trade marks will only cover the remaining EU States.
Upcoming legislative changes will ensure the holder of an RCD is provided with an equivalent UK right. They will retain the registration and application dates recorded against the corresponding RCDs and will inherit any priority dates. Re-registered designs will be created at no cost to the RCD holder.
As independent UK rights, they may be challenged, assigned, licensed or renewed separately from the original RCD.
If you hold a pending RCD application on 1 January 2021, it will be possible to apply to register a UK design up to, and including, 30 September 2021. So long as the UK application relates to the same design filed in the pending RCD application, the UK design will retain the earlier filing date of the pending RCD.
Once created, a separate renewal fee will apply both for that UK right and the corresponding RCD. These will be paid separately to the ICO and EUIPO.
Designs protected in the UK as a UCD before 1 January 2021 will be protected as a UK continuing unregistered design and will be automatically established on 1 January 2021. It will continue to be protected in the UK for the remainder of the 3-year term.
Under the new law, a UK unregistered design right will be created called a supplementary unregistered design (SUD). The terms of SUD protection will be similar to that already provided by UCD. Both SUD and UCD provide protection for both 2D and 3D designs for a period of 3 years. However, this protection will not extend to the EU.
SUD will be established by first disclosure in the UK. It is important to note that first disclosure in the EU will not establish a SUD whilst first disclosure in the UK will not establish a UCD. It is vital to carefully consider the manner of first disclosure as the novelty of the design could be destroyed if done incorrectly. Both the IPO and EUIPO can provide further guidance on first disclosure.
Parallel Trade from the UK to the EEA
Parallel trade is the import and export of genuine IP protected goods. This occurs when the IP rights in these goods are ‘exhausted’. This means they have been placed on the market of a specific territory by, or with the permission of, the rights holder. There will be some changes to the exhaustion of IP rights systems post-Brexit.
Goods placed on the UK market after the transition period may no longer be considered exhausted in the EEA. This means that a business exporting these goods from the UK to the EEA may need the right holders consent.
In the event that your business is exporting IP-protected goods to the EEA which have already been placed on the UK market, you may need to contact the rights holder to get permission to continue this practice after the transition period ends.
Most UK copyright works will still be protected in both 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 copyrights will continue to be protected in the UK.
If you do not take action, there is a risk your business operations will be interrupted. You can find out what other actions you may need to take by using the checker tool.
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