Skip to content

Something urgent? Call us now! (852) 3416 1711

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

35+ years of legal experience is just a click away.

Friendly and approachable, we are ready to answer your questions and offer you sound advice.

Contact us now


News & Knowledge

Learn more about what we do and what we say. Subscribe to our newsletter to ensure you receive our updates.

  • This field is for validation purposes and should be left unchanged.

Festive falling-out is belatedly nipped in the bud

Hong Kong, 20 January 2021: Lunar New Year, which will fall on 12 February, always captures Hong Kong in full bloom. It is peak season for florists as swathes of citizens converge on flower markets across the territory, including a huge one in Victoria Park. Amid family gatherings, firecrackers and festivities, there is much joy […]

Read more

BC&C quintet are admitted as Solicitors

Hong Kong, 18 January 2021: There were scenes of celebration at the High Court on Saturday when five members of Boase Cohen & Collins’ legal team were formally admitted as Solicitors in Hong Kong. The ceremony was the culmination of years of law studies followed by traineeship with the firm for Joyce Leung, April Kong, […]

Read more

A tough job, judging by the political climate

Hong Kong, 13 January 2021: The world was a simpler place in September 2010. In Barrack Obama, the US had a first-term President who appeared intent on unifying the country; David Cameron was the newly elected Prime Minister of a UK firmly established as a seasoned member of the EU, he didn’t appear the sort […]

Read more

Cookies and what you need to know

By Allison Lee Hong Kong, 12 January 2021: Cookies, also known as HTTP Cookies, are text files which are stored on a user’s computer to enable website owners to identity the user’s computer or electronic device. They are generally used by website owners to track a user’s online behaviour or interaction with websites. These text […]

Read more

Peace at last for sisters who ‘didn’t exist’

By Wendy Kwan Hong Kong, 11 January 2021: It is hard to believe that a significant number of people in Hong Kong have never had their birth registered. It means they exist without a birth certificate and are forced to live life under the radar with no ID card or passport. They cannot attend school […]

Read more