Intellectual property after 1 January 2021

The transition period ends on 31 December 2020. On 1 January 2021 there will be changes to UK intellectual property law to ensure the smooth departure from EU IP systems.

The following is a summary of the key changes.

Use of representatives and address requirements to represent

From 1 January 2021, UK attorneys will be unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO). UK trade mark owners will need to appoint an EEA attorney to represent them on new applications and proceedings before the EUIPO.

However, the Withdrawal Agreement (WA) ensures that UK legal representatives can continue to represent their clients before the EUIPO in cases that are ongoing at the end of the transition period.

UK Address for Service (AfS)

The IPO are considering making changes to the rules on correspondence addresses (‘address for service’ – AfS) at the end of the transition period.

A call for views was published asking for views on removing reference to the European Economic Area.

This would mean that only UK or Channel Island AfSs would be accepted for new applications and new requests to start contentious proceedings.

Any change would apply across all the registered IP rights (patents, trade marks and designs) and will be notified as soon as possible.

Changes to IP rights

Trade Marks

Comparable UK trade mark and Design rights will be created at the end of the transition period under the terms of the Withdrawal Agreement.

On 1 January 2021, The IPO will create a comparable UK trade mark for every registered EU trade mark (EUTM). Each of these UK rights will:

  • be recorded on the UK trade mark register
  • have the same legal status as if you had applied for and registered it under UK law
  • keep the original EUTM filing date
  • keep the original priority or UK seniority dates
  • be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM

You will not:

  • need to file an application for this right or pay an application fee. There will be as little administration involved as possible
  • receive a UK registration certificate, but you will be able to access details about the trade mark on GOV.UK and can take a screen shot from there as evidence of your right.

Businesses, organisations or individuals that have applications for EUTMs which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection. In this case, UK application fees will be payable, and the application will be subject to UK examination and publication requirements.

Our digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding EUTM application.

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