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An important post-Brexit IP update

By Susan Cheung

Hong Kong, 28 December 2020: While the United Kingdom left the European Union earlier this year, on 31 January, it has continued to be bound by EU rules during an 11-month transition period. The period will end at 11:00pm GMT this coming Thursday, 31 December.

This has consequences for individuals and businesses with EU intellectual property registrations since, from that point onwards, EU Trade Mark and Design Rights will no longer be effective in the UK.

However, new rights will be created (or “cloned”) automatically on the UK Register (“UK clone”) to replace the EU Rights and will come into force after the transition period. The resulting EU Trade Mark and Design Rights after the creation of the UK clone will continue to be registered in the remaining 27 countries within the EU.

Two points flow from this:-

(i) Registered Trade Marks and Designs

EU Trade Marks and Designs which are registered as of 31 December 2020 will be cloned to create separate UK registrations and given a new UK number. This will, to all intents and purposes, be automatic and no action is needed, unless a proprietor of a registration decides to opt out having their EU registration extended to the UK as a separate National registration. It may be the case, for example, that the UK registration is not permitted because of an agreement that has been reached with a third party, etc.

(ii) Pending Applications

For all Trade Marks and Designs applications which are pending as of 31 December 2020, there will be a nine month period within which to convert the EU application into a National UK application and there will be fees to convert.

For both scenarios, the original EU filing date is retained for the UK portion.

It is worth noting that Patents will be relatively unaffected after 31 December since the European Patent Convention, which governs patent applications across the continent, is not EU legislation. Similarly, UK Copyright works will still be protected in the EU via international treaties on copyright.

If anyone requires legal advice regarding intellectual property matters in general and post-Brexit issues in particular, here at Boase Cohen & Collins we are ready to assist.

Susan Cheung has been a Partner in Boase Cohen & Collins since 2016. Her key areas of practice include intellectual property (trademarks, designs, patents and copyright), civil and commercial litigation, information technology and trade secrets. She can be contacted at susan@boasecohencollins.com.

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