New regimes for protecting trade marks, designs, geographical indications and plant variety rights in the UK post Brexit and for recording IP rights with UK customs
Owners of pan EU protection granted before 31 December 2020 for other less well-known IP rights have benefitted from a similar automatic creation of mirroring UK rights, coinciding with the EU rights ceasing to have any force in the UK.
On the other hand, IP rights recorded with UK customs authorities before the end of 2020 are not in all cases automatically deemed still recorded in the UK and, in certain cases, a fresh recordal is required.
Below is a summary of the effect of Brexit on these less common IP rights and the of new regimes for obtaining protection for all these IP rights in the UK and for recording IP rights with UK customs authorities.
The EU operates a scheme protecting the use of names designating food, drink and other agricultural products associated with a specific region and sourced from that region and names for traditional food products of specific character. These names are collectively known as Geographical Indications or GIs.
Examples of names of drinks protected under the EU’s GI scheme are Champagne, Prosecco, Scotch Whisky and Kriek.
Examples of food names protected as GIs in the EU are Kalamata Olives and Roquefort.
GIs differ from trade marks in that they do not indicate that the product originates from one particular business, but rather that the product sold under that name meets the agreed criteria for products bearing that name. Protection for GI status is usually applied for by the association of producers of the product concerned in order to prevent consumers being misled by non-genuine products which may be of inferior quality or of different flavour.
Before 2021, the only means of obtaining GI protection in Great Britain was through the EU scheme.
As part of the Brexit arrangements, any GIs protected through the EU scheme before the end of 2020 were automatically entered onto the newly created register of GIs administered by the UK’s Department for the Environment, Food and Rural Affairs (DEFRA).
From 1 January 2021, where protection is required in Great Britain for a GI not previously protected in the EU, an application will need to be filed for entry onto the Register of GIs administered by DEFRA.
An anomaly of the new UK regime is that where protection is required for a new GI in Northern Ireland, an application will need to be filed for protection under the EU scheme. This is because DEFRA’s register is not binding on Northern Ireland which remains within the EU GI’s scheme.
Producers selling products under GIs protected in Great Britain must follow DEFRA’s rules for applying the appropriate GI logo to UK products or their packaging. DEFRA’s logos for the three different type of GIs are shown above.
However for names which were protected under the EU GI scheme before the end of 2020, permitted users have until the end of 2023 to replace the EU GI logo on UK products with the appropriate DEFRA logo
Plant Variety Rights
Plant Variety Rights (or Plant Breeders’ Rights) are registrable IP rights specifically designed to protect new varieties of plants.
It is possible to protect a qualifying plant variety simultaneously across all EU member states in the form of a Community Plant Variety Right. Owners of a Community Plant Variety Right granted before 31 December 2020 automatically received a corresponding UK Plant Variety Right on 1 January 2021.
Since Community Plant Variety Rights granted after 31 December 2020 no longer provide protection in the UK, where UK protection is required for a new plant variety, an application for UK protection will now need to be filed with the UK Plant Variety Rights Office.
Trade Marks and Designs
As explained above, mirroring UK rights were automatically created on 1 January 2021 in respect of granted European trade mark rights and granted and published European design rights.
Where protection is required for a new trade mark in the UK then either a UKTM application will need to be filed or the UK will need to be designated through an international trade mark application/registration
Where UK protection is required for a new design in the UK then either a UK design application will need to be filed or the UK will need to be designated through an international design application.
Where either an EUTM application or an EU designation of an international TM registration was still pending on 31 December 2020, its owner can, when filing a mirroring UKTM application before 30 September 2021, validly claim the EU filing (or earlier priority) date.
Where, on 31 December 2020 either an application for a Registered Community Design or an EU designation of an international design registration was still pending or was granted but not published, its owner can, when filing a mirroring UK TM application before 30 September 2021, validly claim the EU filing (or earlier priority) date.
Recordal of IP Rights with UK customs
Recording registered IP rights with customs authorities is an important tool in controlling the importation of counterfeits. By recording the IP rights, the IP owner authorises the customs authorities to detain goods which they suspect to be counterfeit.
From 2021 onwards, the only way to record new IP rights with UK customs authorities is to file an Application for Action in the UK.
EU law permits owners of EU rights to submit, through the customs authorities of any EU member state, a customs recordal application covering that member state and also, if desired, other EU member states. Thus, while the UK was still an EU member state, it was possible to record IP rights with UK customs authorities either through (a) an application filed with the UK customs authorities or (b) a recordal covering the UK and other member states filed through the customs authorities of any other EU member state.
IP rights successfully recorded in the UK before 2021 as a result of an application lodged with UK customs authorities (either for the UK alone or other EU members states), remain recorded in the UK until the recordal expires (although the IP rights will need to be recorded afresh in the other member states). No fresh application needs to be filed with UK Border Force.
Conversely, where the IP rights were recorded with the UK customs before 2021 through an application lodged with the customs authorities of another EU member state, these rights ceased to be recorded with UK customs at the end of 2020. Consequently, a fresh Application for Action will need to be filed with the UK customs authorities.
Since UK authorities require the Application for Action to be submitted 30 working days before UK Border Force can begin monitoring, it is essential to submit the Application for Action as early as possible.