Skip to content

有緊急法律疑難?請立即致電 (852) 3416 1711 與本行聯繫。

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.

按此了解本行逾35年的專業法律經驗。

本行的律師團隊友好親切、平易近人,樂於解答您的疑問,並為您提供合理的建議。

聯繫我們

BC&C-contact-us

新聞及知識

了解更多關於本行的工作和其他資訊。訂閱本行的企業通訊,以確保您收到我們的最新消息。

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

A rather unpalatable legal process

Hong Kong, 3 March 2021: Fatty foods are off the menu i […]

Read more

All revved up with no place to go

Hong Kong, 24 February 2021: During lunch with a fellow […]

Read more

Fighting an outbreak of dishonesty

By Erica Chong Hong Kong, 22 February 2021: Coronavirus […]

Read more

Two steps forward, one step back

Hong Kong, 17 February 2021: My new-found passion for h […]

Read more

A bay window of opportunity for lawyers

By Alex Liu Hong Kong, 10 February 2021: Hong Kong lawy […]

Read more