UK Intellectual Property Rights Update

It seems hard to believe that it is now almost two years since the United Kingdom left the European Union.

This paper provides a summary of the changes made to law and practice regarding UK Intellectual Property Rights, which took effect from 1 January 2021. Those changes have been fine tuned and continue to evolve:

Patents

• The European Patent Office (EPO) is an institution that is not related to the EU, so the current system for obtaining European patents remains unaffected by Brexit.

Trade marks

• Equivalent cloned rights created from EU and International (EU) trade marks registered at 31 December 2020 continue to have force in the UK but are treated as entirely separate rights from their ‘parent’ EU rights. The cloned rights must be renewed and any changes to ownership or name recorded separately.
• Any EU trade mark application that was pending as at 31 December 2020 will no longer cover the UK, and trade marks need to be protected separately in the UK through a national filing or as a separate designation within an International trade mark application.
• Challenges to UK trade mark applications or registrations can be based on a cloned UK right created from an EU or International (EU) trade mark. Up to 31 December 2025 use of such a right in the EU will maintain the UK cloned right and can be relied on for the purposes of any opposition or cancellation.
• Update: The UKIPO introduced a change to the transitional provisions on 26 November 2021. Where opposition is made to an application filed before 31 December 2020, the opponent must rely on its EU right if its only UK right is a cloned right. If the EU right relied on is subject to a successful challenge at the EUIPO or EU Courts, it can no longer be relied on as an earlier right in the UK opposition proceedings.

Designs

• The UK automatically created equivalent cloned rights from registered Community designs and international design registrations having an EU designation registered as of 31 December 2020. These rights continue to have force in the UK but are treated as entirely separate rights from their parent Community design registration.
• Any application for a registered Community design filed in the EU and which remained pending as at 31 December 2020 will no longer cover the UK. A grace period allowed for any pending EU applications to be refiled in the UK as comparable applications came to an end on 30 September 2021. This means that designs will now need to be protected separately in the UK through a national filing, in addition to filing a registered Community design application to seek protection in the EU member states.

Plant variety rights (PVRs)

• Any plant variety application filed in the EU (at the Community Plant Variety Office) no longer covers the UK. PVRs will need to be protected separately in the UK by applying via the International Union for the Protection of New Varieties of Plants.
• EU PVRs registered before 1 January 2021 have been given a corresponding UK right and will have continued protection in the UK.

Renewal

• Newly filed or automatically created comparable UK rights must be renewed separately to ensure continued UK protection. This applies to trade marks, designs, and PVRs.
• Note in particular that renewal of an International trade mark which was protected in the EU before 31 December 2020 will not result in renewal of the equivalent UK cloned right.

Representation

• From 1 January 2021 the UK has required a UK address for service for all live matters at the UK Intellectual Property Office (UKIPO). There is a grace period of three years for representation of EU trade marks and designs from which cloned rights were created post-Brexit and that will come to an end on 31 December 2023. However, a UK representative will need to be appointed before certain tasks can be actioned before the UKIPO. The grace period does not apply to cloned rights created from IR (EU) registrations.
• It is not yet clear whether the UKIPO will continue to send notice of trade mark applications to the owners of rights cited against an application to a non-UK address for service after the end of the transition period. The UKIPO has no power to refuse an application based on an earlier conflicting right so to be sure of receiving timely notice of citations a UK address for service is advisable.
• Any contact information on record at the EUIPO and WIPO should have been transferred to the UKIPO when the cloned rights were created, but it will not now be updated.
• Bulk recordals information awaited from UKIPO.

Exhaustion of rights

The UK recognises the concept of exhaustion of rights in respect of goods placed on the EEA market by, or with the consent of, the rights owner, so if goods are placed on the market in the EU they can then be imported into the UK freely as the intellectual property rights’ (IPR) owner’s rights are said to have been exhausted.

The reverse is not true, so that goods placed on the market only in the UK cannot be freely exported to the EEA and the consent of the IPR owner may be needed. The UK government is continuing to consult on whether this position should continue, supported by the UKIPO, and the outcome of that consultation is expected by 31 March 2023.

The Future of IP in the UK

The UKIPO has a number of initiatives in progress. Of particular note are:

• UK Designs Reform – a consultation is in progress seeking views on the current system with a focus on whether the system is too complex, whether it is adaptable to new technologies (for example, should animated designs be protectable), and the user-experience.
• Futures – research is underway into the metaverse and its challenges and opportunities, along with developments in IP Licensing in the context of technological developments, and the way IP is perceived by the general public in a fast-changing technological environment.