There are many differences which will affect intellectual property owners, creators and stakeholders on 1st January 2021 after the transition period is over and we start life in a different world to that of being part of the European Union and, therefore, benefitting from many advantages of that relationship. The UK Intellectual Property Office has provided useful guidance here It includes key information for customers and users of IP about how the IP system and the IP Office will operate after the end of the transition period.
ACID is delighted to announce that one of its legal affiliate lawyers, Gavin Llewellyn, a partner of Stone King has also written some very useful guidelines accompanied by advice.
Please see the full Stone King Guidance here.
Gavin said, “With the end of the transition period with the EU fast approaching, there are several key steps which individuals, businesses and other organisations with EU and UK IP rights should consider taking now to prepare for the changes which will come into effect on 31 December 2020 and ensure that their current and future rights are not prejudiced. Brexit will have an impact on many IP rights, especially on registered trade marks, registered designs and unregistered design rights, which are key IP assets for any creative enterprise”.
Dids Macdonald, OBE., CEO of ACID added “One of our greatest disappointments is that despite a 4-year campaign the EU rejected a UK Government request in negotiations for reciprocity on unregistered Community designs. (read more here)This is potentially calamitous for UK designers because it means the loss of significant IP protection in EU27. However, we have used the consultation on the Enforcement Framework to raise this matter in support of the UK Government strengthening design laws with the addition of criminal provisions for unregistered design infringement”.
Key points in the Stone King include guidance on:
- Registered EU Trade Marks and International Trade Marks designating the EU
- Registered Community Designs
- Unregistered Designs and the introduction of a new Supplementary Unregistered Design
- Design Rights and Qualification
Licence Agreements/Co-existence Agreements
- Exhaustion of Rights
- Database Rights
How can you prepare?
The only way to be certain of complete EU and UK protection is to register trade marks and designs in
both the UK and the EU from now. We suggest that analysis is performed on your existing trade mark and design rights portfolio to ascertain whether steps can be taken before 31st December 2020 to ensure that these rights continue to be protected in the most straightforward and cost-effective manner possible.
The following questions should be asked:
- Are there any pending EU trade mark or design applications which will not be registered before 31st December 2020? If so, apply for national UK trade marks/registered designs.
- Are all current EU trade marks being used in the UK and at least one other EU country or are preparations in place for their use after 31st December 2020?
- EU trade marks which have only been used in the UK to date will also need to be used in at least one EU country after 31st December 2020 in order to maintain the registrations.
- Consider whether you can show genuine use of a trade mark in a “significant part” of the EU.
- EU trade marks which have not been used in the UK to date will need to be used in the UK as well after 31st December 2020 in order to maintain the comparable UK mark.
- Where might protection need to be shored up to avert non-use challenges? Consider applying for new trade marks in either the UK or the EU in order to re-set the five year non-use period for potentially vulnerable marks.
- Ensure that any new designs which are registered as UK designs are also registered as EU designs before the end of the 12-month grace period (and ideally before the end of the 6 month priority period).
- If you intend to rely on unregistered design rights only, consider carefully where to launch new designs and whether simultaneous UK and EU launch is possible.
- Are the descriptions of rights and/or territorial definitions in agreements clear and are the financial provisions still appropriate or do amendments need to be made for the avoidance of doubt and potential litigation?
- Ensure that any outstanding recordals of assignments, licences or grants of security interests are made with the EUIPO in relation to EUTMs and EUIRs prior to 1st December 2020 and that any assignments, licences or grants of security interests are also recorded against corresponding comparable UK marks after 31st December 2020 in order to avoid losing the full benefit of the transaction.
Stone King LLP www.stoneking.co.uk Email: GavinLlewellyn@stoneking.co.uk