21 February 2021

What happens to European Union IP Rights after Brexit?

Although one of the long term objectives of Brexit is to reposition our trade with the wider world, British businesses of all sizes including many in Yorkshire and the Humber retain important operations in the 27 remaining member states and vice versa. Arts 54 to 61 of the agreement by which the UK withdrew from the European Union ("the withdrawal agreement") provide for the continued legal protection of those operations. On 19 Feb 2021, I was invited to discuss those provisions and their implementation to the Barnsley Business Village.

Many businesses applied for EU trade marks or registered Community designs rather than UK ones because they offered protection in 28 member states and not just one.  Those rights ceased to apply to the UK at 23:00 on 31 Dec 2020 when the transition or implementation period provided by art 126 of the withdrawal agreement expired but they remain in force in the 27 member states.  However, owners of EU trade marks should be aware that their registrations may be revoked under art 58 (1) (a) of the EU trade mark regulation "if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use."  

Art 54 (1) of the withdrawal agreement entitles the owner of an EU trade mark, registered Community design or Community plant variety to a comparable British trade mark, registered design or plant breeder's right without a fee or any fuss unless he or she opts out of that right. The Trade Marks Act  1994, Registered Designs Act 1949 and the Plant Varieties Act 1997 have been amended to provide for such rights.   Applicants for EU trade marks and registered Community designs which were not determined before 31 Dec 2020 have an additional period of 9 months to apply for a UK trade mark or registered design offering the same protection.

One very important change that occurred on 31 Dec 2020 is that courts in the United Kingdom are no longer EU trade mark or Community design courts.  Actions for infringement of EU trade marks, Community designs or Community plant varieties have to be brought in an EU member state such as the Republic of Ireland,  As one of my colleagues in chambers is a senior counsel of the Irish bar (the equivalent of a QC) who qualified as a trade mark attorney before reading for the Irish and English bars, my chambers can continue to represent British holders of EU trade marks and Community designs in the EU.    

i discussed these and other matters in my presentation to the Barnsley Business Village on 19 Feb 2021,  Earlier on Friday, I had been invited by Helen Wong to update my contribution to her book, Doing Business After Brexit A Practical Guide to the Legal Changeswhich she first published in 2017.   Articles and presentations that I have already written on the subject are as follows:
Anyone wishing to discuss this article or the topic generally may call me on 020 7494 5252 during normal business hours or send me a message through my contact form