UK Government Publishes Update on Intellectual Property Rights After Brexit

On 29 January 2020, the UK Government website updated its information on intellectual property rights from the occurrence of Brexit, i.e., during the transition period. It notes that, during this time, EU law will continue to operate as it does now in the UK. The Intellectual Property (IP) system will continue as it is until 31 December 2020. There will be no disruption to the UK IP Office (IPO) services or changes to the UK IP system during the transition period. Importantly, the IPO will convert almost 1.4 million EU trademarks and 700,000 EU designs to comparable UK rights at the end of the transition period. These will come into effect on 1 January 2021.

The Government website notes that the UK will remain part of the EU trademark system throughout the transition period that began on 1 February and ends on 31 December 2020. EU Trademarks (EUTMs) will continue to extend to the UK during this time. The Government will not have created comparable UK trademark rights on 31 January 2020. However, these rights will be created at the end of the transition period.

Hong Kong companies or any other businesses, organisations or individuals that have applications for an EUTM which are ongoing at the end of the transition period will have a period of nine months from the end of the transition period to apply in the UK for the same protections.

From 1 January 2021, EUTMs will no longer protect trademarks in the UK. Rather, on 1 January 2021, the UK IPO will create a comparable UK trademark for all right holders with an existing EU trademark. On the other hand, existing EUTMs will still protect trademarks in EU Member States. UK businesses can also continue to apply to the EU Intellectual Property Office for an EUTM. Furthermore, there will be no changes to UK-registered trademarks as a result of the UK leaving the EU.

The Government website provides further details on the issuance of a comparable UK trademark in place of an existing EUTM. As noted above, on 1 January 2021, the IPO will create a comparable UK trademark for every registered EU trademark (EUTM). Each of these UK rights will:

• be recorded on the UK trademark register,

• have the same legal status as if the trademark holder 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 trademark that can be challenged, assigned, licensed or renewed separately from the original EUTM.

It will come as good news to Hong Kong traders to know that the existing EUTM holder will not have to pay for the equivalent or comparable UK trademark, and – according to the website – there will be as little administration involved as possible. The trademark holder will also not receive a UK registration certificate, but will be able to access details about the trademark on the website GOV.UK.

It should be noted that the Government will only create a comparable UK trademark for EUTMs registered before 1 January 2021.

If a person has an EUTM application that is still pending on 1 January 2021, they will be able to apply to register a comparable UK trademark in the 9 months after 1 January 2021, while retaining the earlier filing date of the pending EUTM. In addition, if the person applies to register for a comparable UK trademark, the application must relate to the same trademark that was the subject of the EUTM application, and seek protection in respect of goods and services that are identical to, or contained within, the corresponding EU application. The person must submit their application within 9 months of 1 January 2021. The Government will then treat the pending EUTM application as a UK application, and examine it under UK law. The usual UK fees of £170 will apply, including one class of goods or services, and an extra £50 for each additional class.

Traders should also note that before applying for a UK trademark in the 9 months after 1 January 2021, they should use the EU Trade Mark Register to check whether any EUTM applications were: pending on 1 January 2021, or hold an earlier filing or priority date.

For further details on intellectual property rights during the transition period and beyond, Hong Kong companies may like to visit the relevant GOV.UK website.