Brexit and IP: Your FAQs answered

5 January 2021

Welcome to our FAQs on Brexit and your IP. Please click the questions in the list below to read the detailed responses. If you have any questions about Brexit and your IP portfolio that aren't covered below, or would like to speak to an IP adviser for detailed responses, don't hesitate to get in touch with our Brexit taskforce.

Cloning of EU rights

How is Novagraaf handling the automatic cloning of trademark and design rights, and are the new rights visible in EasyIP?

All cloned UK rights have been automatically created in our IP management software and are therefore visible to clients on EasyIP. The cloned rights are recognisable by their unique numbers (see below).

Do I need to appoint a UK address for service for my cloned rights?

It is not a requirement to appoint a UK representative for a cloned UK right during the first three years of its life, i.e. until 2024. However, it is advisable to provide a UK address for service for all UK registrations in case any issues arise in the UK (see ‘Brexit and IP: Understanding the UKIPO address for service rules change’ for more information on the rules regarding a UK address for service).

What number has been given to my new UK cloned right and am I able to easily identify other clones on the UKIPO register?

The number allocated to the cloned UK trademark is the last eight digits of the EU trademark (EUTM) prefixed with UK009.

With regard to new UK rights created from the EU designation of an International registration (IR), the number allocated to the cloned trademark is the last eight digits of the IR (EU designation) prefixed with UK008. This provides users with a means to identify UK rights created from International registrations and to distinguish them from existing UK trademarks.

With regard to Registered Community designs (RCDs), to distinguish the re-registered designs from existing UK registered designs, the number allocated to them consists of the full 13-digit RCD number prefixed with the digit ‘9’.

Conversion applications

When can I file a conversion from my pending EU right?

To benefit from the conversion process and to retain the same filing date as the pending EU right, you must apply to register the same trademark as a UK right within nine months after the end of the transition period, this being up to and including 30 September 2021.

Where an EUTM is opposed and the applicant has requested the UK conversion, if the EUTM is then rejected, does the UK-converted trademark right remain valid?

The application for a UK conversion is not tied to the pending EUTM and can therefore proceed to registration, even if the EUTM application is ultimately rejected. The UK right can be opposed separately, but the opponent would need to rely on rights that are valid in the UK.

Where an EUTM is registered but was already subject to cancellation when the UK left the EU, there will be an automatic clone and this right will be tied to the outcome of the cancellation action at the EUIPO.

Do I need to appoint a UK representative to file an application for a conversion from a pending EUTM?

A UK address for service is required for all new UK applications after 31 December 2020 (see ‘Brexit and IP: Understanding the UKIPO address for service rules change’ for more information on the rules regarding a UK address for service).

How can I instruct Novagraaf to proceed with UK conversions?

Please contact your Novagraaf attorney, or contact us below to appoint Novagraaf as your UK address for service so we can proceed with UK conversions on your behalf.

Renewals

Can I still benefit from a UK clone if I did not renew my EU registration before 31 December 2020?

As long as the EUTM is renewed within the six-month late renewal grace period, then a UK right will automatically be created and renewed without additional cost. This only applies to EUTMs that were due for renewal prior to 31 December 2020.

If my EU renewal is due in 2021 but I renewed it early, in 2020, will this mean I avoid having to file a separate UK renewal?

No, early renewal will not avoid the payment of fees for the renewal of the cloned UK right.

When can I file a renewal application for my UK cloned right?

UK cloned rights can be renewed any time after they were created on 1 January 2021, but only within the six months prior to their renewal deadline. Any newly created UK right that is due for renewal within six months of 1 January 2021 will benefit from a further six-month period after its expiry, during which it can be renewed for no additional official fees.

Contentious proceedings

What happens to EU opposition/cancellation actions which are based on UK rights?

If the action is based solely on UK rights, it will be dismissed. If there are other EU-wide rights that are relied on, the opposition/cancellation will proceed based solely on those rights.

What happens if my EU registration was subject to a pending cancellation as of 31 December 2020?

Where an EU trademark was subject to ongoing cancellation proceedings at the end of the transition period, a UK right will have been created. If the EUTM is subsequently cancelled, the outcome shall be applied to the corresponding UK cloned right as well. The cancellation of the UK right is not automatic and must be requested by the claimant at the UKIPO.

There is an exception where the grounds for cancelling the EU trademark would not apply in the UK. In this case, the UK right will not be cancelled. This is referred to as a derogation.

Any cancellation action filed against an EUTM after 1 January 2021 will have no effect on the cloned UK registration.

If a third party opposes the UK designation of my IR, and the UK designation is denied protection, will I still have a UK cloned right deriving from my EUTM and will this clone be submitted to a new opposition period?

Any EU rights which were registered by the end of the transition period have been automatically cloned as registered national UK rights and there will be no new opposition period. The newly created, cloned UK rights will, however, be subject to invalidation/revocation proceedings as per any other registered right.

Can I extend the opposition period in the UK if I am waiting for a converted UK application to be filed?

Beyond the normal process for extending opposition periods from two months to three months, UK opposition periods cannot be extended to await the re-filing of a UK application based on a pending EUTM/IR(EU). Similarly, invalidation actions cannot be based on converted earlier marks until they have been re-filed.

However, parties can request that a ground of opposition/invalidation based on a subsequently re-filed pending EUTM/IR(EU) be added to proceedings which have been launched on the basis of other grounds/marks. This only applies to invalidations or oppositions filed on or after 31 December 2020 against trademarks which were themselves filed on or after the UK’s departure from the EU. The tribunal will take all factors into account when deciding whether to grant such a request.

If the opposition deadline for a UK application fell after 31 December 2020, but the application itself was filed before 31 December 2020, can I still rely on my EU right to oppose the UK application?

These proceedings will be dealt with under the Act as it existed before Brexit. In this scenario, EUTMs and IR(EU)s will continue to constitute earlier trademarks for the purpose of the proceedings. This applies to both registered and pending marks, although, in respect of pending marks will be subject to the earlier mark subsequently being registered. In these proceedings it will not be possible to substitute in, or add, comparable marks or re-filed EUTM/IR(EU)s.

Use and reputation

How has the end of the transition period impacted the use requirements for my EU registration and my new UK clone?

UK perspective:

Any use of the trademark in the EU made before 1 January 2021, whether inside or outside the UK, counts as use of the cloned UK right.

Where the relevant five-year period includes time before 1 January 2021, use in the EU will be considered. Where the period includes any time after 1 January 2021, use of the cloned trademark in the EU (and outside of the UK) within that period will not be taken into account.

In all cases, the five-year period of suspended use is activated by last use of the corresponding EUTM or cloned trademark. Where that use was of the corresponding EUTM, and it was made in the EU before 1 January 2021 (whether inside or outside of the UK), it will count for the purposes of the cloned trademark.

EU perspective:

Use of the EU trademark in the UK – as from of the end of the transition period – no longer qualifies as use ‘in the EU’ and so does not count for the purpose of maintaining the rights conferred by the EU trademark.

Use of the EU trademark in the UK before the end of the transition period constitutes, in principle, use ‘in the EU’ for the purpose of maintaining the rights conferred by the mark so long as that use related to the relevant period for which use has to be shown.

Designs

Is my EU unregistered design (UCD) still protected and enforceable in the UK from 1 January 2021?

Designs that were protected in the UK as UCDs before 1 January 2021 continue to be protected as UK continuing unregistered designs and were automatically established on 1 January 2021. The designs continue to be protected in the UK for the remainder of the three-year term attached to them.

If a corresponding UCD was established before 1 January 2021 through first disclosure in the EU but outside of the UK, this will not affect the validity of the continuing unregistered design.

How does my design qualify for unregistered designs rights in the UK after the transition period?

From the end of the transition period, qualifications for the UK design right are limited to:

people resident in the UK or a qualifying country
businesses formed under the laws of the UK or a qualifying country

Where qualification is a result of first marketing, you will need to have disclosed your design in the UK or a qualifying country.

It is not possible to have ‘dual disclosure’ of a design in both the UK and the EU, first disclosure can only be in the UK or EU. Protection will be given in the jurisdiction where first disclosure of the design occurs.

I have deferred publication of my EU design application, will it benefit from conversion?

No, where publication of a design was deferred as of 31 December 2020, the design would not have been automatically cloned. Its owner can apply to the UKIPO for a conversion (as they would for pending trademark/designs) but they would not have benefited from automatic cloning because the RCD was considered pending as of 31 December 2020.

Customs AFAs

Has the end of the transition period impacted my existing customs notice and if so, do I need to file a new one?

As of 1 January 2021, any existing EU application for action (AFA) filed in a member state other than the UK, no longer includes the UK. In this case, a new UK specific AFA should be filed if protection is required in the UK.

If the EU AFA was filed via UK customs, it will remain valid in the UK but not the other EU member states. In this scenario, a new EU AFA should be filed via one of the remaining EU member states.

UKIPO fees

Has the UKIPO changed its official fees?

We are not aware of any changes to the UKIPO's fees, other than the waiving of late renewal fees for cloned UK rights in certain circumstances.

Representation

If my EU designation of an IR has an EU representative appointed, has this been cloned in my UK right?

Yes, the representative for the EU designation of the IR would have been automatically recorded against the cloned UK registration.

If my EU designation of an IR has no representative appointed, has the WIPO representative been recorded in the cloned UK right?

The cloned right would have inherited the representative details and address for service from the EUIPO. If, however, the EU designation has no representative at the EUIPO, the UK right would also be without a representative. The details would not have been taken from WIPO.

What happens if the representative for my cloned UK registration is based outside the UK and EU?

With cloned rights arising from EUTMs and RCDs, no changes to representatives and/or addresses for service will be required for three years (the three-year grace period).

However, cloned rights arising from International (EU designation) trademarks and International (EU designation) designs are being treated as pure UK rights. The three-year grace period will not apply. Instead, the same address for service changes for directly filed domestic UK applications will be required.

So, a UK, Gibraltar or Channel Islands address for service will be required if any proceedings such as opposition, cancellation, invalidation etc. are initiated from 1 January 2021 on any of these IR cloned rights.

Where there is no representative for my EU designation and the WIPO representative is not included in the UK right, is my UK registration ‘orphaned’? Does a UK representative need to be appointed?

If there is no representative, then communication would be with the rights holder and subject to the address for service changes summarised here.

Geographical indications

Do I need to re-file my geographical indication to maintain protection in the UK?

Geographical indications that were registered in the European Union before the end of the transition period, and those that were entered into the register by the end of the transition period, have remained protected in the UK, without the need to re-file in the UK or to undertake any administrative procedures to ensure such protection.

The registration in the UK of the stock of EU geographical indications will be free of charge.

From 1 January 2021, there is a new system in place for the protection of GIs in the UK. It is necessary to apply separately for protection in the UK for any new GIs filed after 1 January 2021.

Supplementary Protection Certificates (SPCs)

What remains the same regarding SPCs from 1 January 2021?

Granted UK SPCs remain valid, with no change to their term. SPC applications that were filed in the UK by 31 December 2020 will continue to progress – re-filing is not required – in addition, once granted, they will provide the same rights.

For applications filed on or after 1 January 2021, an application for an SPC still requires a UK or EP(UK) granted patent, as well as a marketing authorisation which is valid in the UK. However, the process of applying for a marketing authorisation has changed.

What has changed for marketing authorisations?

Before 1 January 2021, marketing authorisations were granted either by the European Medicines Agency (EMA) or by the UK Medicines & Healthcare products Regulatory Agency (MHRA).

Where a marketing authorisation had, before 2021, been granted by the European Medicines Agency, it would have been converted on 1 January 2021 into an equivalent UK authorisation.

From 1 January 2021 the MHRA is the UK’s stand-alone medicines and medical devices regulator, taking decisions and carrying out functions which were taken or carried out at EU-level. There is, however, an exception to this: Under the Northern Ireland (NI) protocol, NI is still bound by EU law for the authorisation of medicines and plant protection products. As a result, decisions on Marketing Authorisation applications for Northern Ireland will continue to be made centrally, by the EMA.

These factors mean that, from 1 January 2021, three types of Marketing Authorisations are possible:

MAs which have been converted from existing EMA MAs: valid across the whole UK;
MAs granted by the EMA: valid for NI;
MAs granted by the MHRA: valid in England, Scotland and Wales only.

This does not mean separate SPCs however, as the Government has published legislation (Supplementary Protection Certificates (Amendment) (EU Exit) Regulations 2020) allowing an SPC to be granted based upon whichever marketing authorisation (or combination of authorisations) the applicant has at the time of its application.

Importantly, the protection conferred by the SPC only extends to the part(s) of the UK for which a valid MA has been granted on filing the SPC application, for example, if the SPC is granted based upon a marketing authorisation covering NI only, the SPC will provide protection for NI only. The applicant can apply for additional marketing authorisations up until the point that the SPC comes into force (i.e. expiry of the basic patent) and so extend protection to the whole of the UK.

What has changed for paediatric extensions?

Prior to 1 January 2021, EU law provided for a six-month extension to an SPC which related to a medicinal product for children for which data has been submitted according to a Paediatric Investigation Plan (PIP). From 1 January 2021, equivalent provisions have been introduced under the UK’s Human Medicines Regulations 2012. The process of applying for an extension remains the same, and can be made at the same time as filing the SPC application or at any point up to two years before the SPC expires. The same conditions for grant need to be met, however it will no longer be necessary to provide evidence of authorisations covering the product across the EEA.

Has there been a change to manufacturing waivers relating to SPCs?

A manufacturing waiver relating to SPCs and based in EU legislation came into force on 1 July 2019 which allows manufacturers to make SPC-protected medicines for export outside the EU without the consent of the rights holder. It also allows making and storage of medicines during the last six months of an SPC ready for a Day One launch in the EU after the SPC expires.

Following a call for views by the government on the UK version of the waiver, UK legislation has been enacted confirming that the manufacturing waiver has been retained. As such, third parties continue to be able to make SPC-protected products in the UK for export to countries outside of the UK and EU and, in the final six months of the SPC, to store SPC-protected products in the UK for sale in the UK or EU on expiry of the SPC.

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