Brexit ready

Preparing you for when the Brexit transition period ends

News alert

The UK IPO has written to the 4 Presidents of the UK IP institutes advising that the EU is not willing to agree to recognise reciprocal disclosure and the unregistered design rights flowing from such disclosures. We are digesting this development and the implications of clients’ first disclosing their designs in the UK versus the EU. More news will follow shortly.

"While Brexit will inevitably bring changes to the UK's relationship with other European countries, your relationship with Potter Clarkson will not change in any way. It will not disrupt the services we provide to you – it is business as usual."

Steve Smith, Managing Partner

Potter Clarkson Group

With the end of the transition period fast approaching, it is important to get ahead and consider how you will secure and maintain protection - both in the EU and the UK.

Over four years on from the referendum, we are aware that Brexit fatigue may have set in for some and that the coronavirus pandemic may have affected your Brexit preparations. However, it is important to take advantage of the remaining months of the transition period to ensure you are prepared.

Navigating the changes to the European IP landscape does not have to be complicated. We have developed this hub to provide you with an overview of the UK's position regarding intellectual property in a post-Brexit landscape, along with our recommendations to ensure your rights remain protected.

We are Brexit-ready

As a pan-European intellectual property law firm, with offices and attorneys in the UK and in several EU-member states, our ability to support clients in all aspects of IP is completely unaffected by any Brexit-related changes. The key benefits of working with us are:

Our People

The firm has a significant presence in mainland Europe, with manned offices in Stockholm, Lund, Copenhagen and Aarhus. Teams led by European Trade Mark and Design Attorneys Jesper Sellin, based in our Stockholm office, and Lars Karnøe, based in our Aarhus office, are highly experienced in representing clients before the European Union Intellectual Property Office (EUIPO) and EU court systems. Together with the fact that our ability to represent parties at the European Patent Office is completely unaffected by Brexit, this enables us to handle all your IP needs.

Our Accolades

We are recognised as a Gold Standard IP firm by the Financial Times and won the coveted UK Trade Mark Prosecution Firm of the Year award for 2020 from Managing Intellectual Property. These accolades serve as important and reassuring evidence for our clients that they are working with an industry-leading team. 

Our Value

Working with one firm - experienced in both UK and EU jurisdictions - ensures a strategic and cost-effective approach to protecting your IP rights in all your key markets.

BREXIT AND YOUR IP RIGHTS

The UK left the European Union on 31st January 2020 and entered a transition period set to last until 31st December 2020. With many clients facing uncertainty surrounding Brexit, we have set out below an overview of the changes to come once the transition period ends.

For a more detailed update, please follow the links below.

Brexit update: trade marks and domain names

Brexit update: designs

Existing UK national intellectual property rights will be unaffected by the UK leaving the EU. This means that any UK patents, supplementary protection certificates (SPCs), designs and trade marks, as well as both European patents and International (Madrid Protocol) Trade Mark Registrations that designate the UK, will continue to apply in the UK. The UK will also continue to be available as a designated state of a European patent application and an International (Madrid Protocol) Trade Mark Registration after the UK leaves the EU.
Whatever deal is struck, Brexit will have no impact on European patents and pending applications or the way in which UK-based European patent attorneys interact with the European Patent Office (EPO). The EPO is not an EU institution, which means that the EPO, and the rules and regulations under which it operates in granting European patents, are independent of the EU. Several non-EU countries are already members, Norway being a notable example. Consequently, our ability to apply for, prosecute and challenge European patents at the EPO will remain unchanged post-Brexit.
UK SPCs (including those extended by a paediatric extension) that have already taken effect will remain in effect after 31 December 2020, and SPCs granted but not yet in force will come into force at the end of the associated patent term, as normal.

Any pending UK SPC application will continue to progress as normal, and from 1 January 2021, patentees can still apply for an SPC and paediatric extension in the same way before the UKIPO. We can assist with this, as before. For new paediatric extension applications, it will no longer be necessary to provide evidence of authorisations in all territories of the European Economic Area.

Marketing authorisations granted by the European Medicines Agency (EMA) will be converted into equivalent UK authorisations from 1 January 2021, and so for SPCs based on EMA authorisations, applicants may be asked to provide information on the converted UK authorisation so that it can be recorded on the register. We can assist with this.

We can also advise on SPC and related Marketing Authorisation procedures in relation to Northern Ireland.
EU trade mark registrations and applications as well as registered Community designs and applications will cease to apply in the UK post-Brexit. The UKIPO will create equivalent UK ‘cloned’ rights of existing EU trade mark and design registrations. For trade mark and design applications that are pending at the EUIPO as of 31 December 2020, there will be a 9-month period to convert those applications into corresponding applications before the UKIPO, along with the payment of a UK filing fee.
From an economic perspective, the UK will always be an important jurisdiction and the ability to enforce monopolies and/or recover damages flowing from infringing activities will remain commercial imperatives. Similarly, the speed of resolving contested proceedings, the quality of our judges and practitioners and the wide spectrum of relief available from the English Courts (as well as the language of proceedings) will continue to make the High Court a forum of choice for domestic and international litigants alike.

Commercial contracts will continue to be drafted in English in many instances, as the international language of commerce, just as English law and jurisdiction will remain an attractive choice for parties seeking to reach an acceptable compromise in cross border negotiations.
The UK officially withdrew from the European Union's Unified Patent Court (UPC) Agreement on 20 July 2020, so any unitary patent will not now cover the UK.

It remains to be seen what the ultimate fate of the UPC might be, with Germany attempting to pass legislation through its parliament that will allow it to ratify the Agreement and, even if Germany is finally able to ratify, two other countries having to consent to the provisional phase before final preparations for the UPC can begin. Nevertheless, as a leading European IP firm, Potter Clarkson will ensure it is positioned to act for clients wishing to use the UPC and to represent those litigating within it, if and when it proceeds, despite the UK’s decision not to take part.

For a more detailed update, please click here.

PREPARING YOUR IP FOR BREXIT

EU trade mark and design registrations will cease to have effect in the UK from 1 January 2021.

The (UKIPO) will create equivalent UK ‘cloned’ rights of existing EU trade mark and design registrations.
All pending and future EU rights will no longer extend to the UK. A separate right will be required to secure protection in the UK.

Potter Clarkson is here to support you through these changes. Find out how we can help you get Brexit ready below.

'Cloned' rights registrations

To help ease the additional administrative burden – and associated liabilities – the cloned rights will bring to your portfolio, we are offering a free service to take on the full professional management of these cloned UK rights.

This will ensure deadlines are not missed, correspondence is processed effectively and contentious proceedings which rely on these cloned rights are managed appropriately. You will also benefit from the full breadth and experience of our award-winning trade marks and designs teams.

Appointing us as your UK representative is a straightforward process, and now is the time to act. Simply provide us with details of the EU rights to be cloned. Contact us via this link and we will begin the smooth transition immediately.

Pending applications

For TM and design applications that are pending at the EUIPO as of 31 December 2020, there will be a 9-month period to convert those applications into corresponding applications before the UKIPO in order to maintain protection in the UK. If this deadline is missed, then the rights will be lost in the UK.

To assist with ensuring continued protection in the UK, Potter Clarkson is able to offer highly competitive filing costs in the UK.

We will waive any professional fees to re-file pending EU applications into UK applications. Our filing fees for reporting publication and registration of an objection free application will be £300.

UK and EU filing packages

Moving forward, it will be necessary to file separate applications in the UK and EU in order to maintain protection across both jurisdictions.

We will provide competitive fee packages if you instruct us to file simultaneous UK and EU trade mark applications for the same trade mark, covering the same goods and services.

OUR BREXIT COORDINATION SPECIALISTS

For more information or if you would like to know more about the ways in which we can help your business, please contact one of our specialist Brexit coordination team members or your usual attorney.