IP Insight: Brexit and IP CHECKLIST

BREXIT AND IP: WHAT YOU NEED TO KNOW

This series of blogs by Virtuoso Legal, the IP specialists cover key changes to the status quo and priorities for businesses operating (or planning to) in Europe.

By James Gilmer and Liz Ward

Introduction

What is the current position? 

For the most part, the IP laws are harmonized in Europe.

The UK's IP laws consist largely of transposed EU law from EU Directives and EU Regulations.

However, as the UK has now left the EU as of  the 1st of January 2021, with a trade deal, what does this mean for Intellectual Property rights holders?

Part 5 provides a list of 10 IP priorities for UK businesses to be prepared for January the 1st. 

Brexit and IP Checklist

Here are 10 priorities businesses operating across the UK and EU need to consider:

1. Review Your Rights

Take time to review any RCDRs, UCDRs and EUTMs you may have that are either, registered or pending, expiring, or showing as expired.

It is always important to have a clear idea of the status of your rights, many businesses overlook this.

Brexit is a good inflection point to establish the status of your coverage, timelines for IPRs and plan for the future.

2. Review Your Jurisdictional Coverage

Consider in which jurisdictions you are currently operating or are likely to operate in and address any gaps in Trade Mark/Design right protection.

As above with the length of protection, the jurisdictional scope of protection is often something that IP stakeholders are not explicitly aware of.

Use this opportunity to get a grasp on where your protection is strong, where you are weaker - and priorities for protection alongside your business goals.

3. Make note of cloned rights and what they protect

Think about any new comparable rights UK Trade Marks/Registered Design Rights that will be cloned automatically from already registered EUTMs, RCDRs, IRTMs (EU) or IRDRs (EU).

Some ‘comparable’ Trade Marks and re-registered UK Design rights may, for example, provide greater protection.

This represents a change in the status of your protection, which may strengthen certain parts of it and diminish others. It is important to review this and be sure that it is in line with your commercial goals.

4. Opt-Out of Unnecessary Cloned Rights

If you already have adequate protection you may think of opting out of the automatically cloned rights. The rationale for this may include not having the financial means to pay the additional registration, or where the cloned right will be subject to potential non-use as you will not make use of it in time.

For example, if you're operating predominantly in Europe and not in the UK (and have no plan to) maintenance of the UK cloned right may not be optimal for you.

5. Renew existing rights before January 1st to save money

If you renew a EUTM on time, which are set to be renewed before 1^st January 2021, you will save yourself money not having to pay a separate renewal fee for the equivalent right in the UK.

If you have rights that are set to expire soon, and which you plan to use, quickly renewing can save your business some of the additional cost which will be associated with this moving forward

6. Make note of gaps in the scope of Design rights

Consider the scope of the Continuing Unregistered Design Right (CUDR) and Supplementary Unregistered Design (SUD).

In design rights especially, there will be a considerable difference in the scope and length of protection.

Having a clear idea of how your designs are protected, where and for how long is a key objective.

7. Boots on the ground for proceedings

Consider any future proceedings at the EUIPO and consider whether you have adequate legal or professional representation in place.

Should you have prospective proceedings in the EU post-Brexit you will need to ensure that your IP lawyers have the capability to represent your interests overseas via a representative.

Notably, for ongoing proceedings which straddle 1st of January, UK representatives will be able to continue a representing a claim in the EU.

8. Compile a list of renewals and budget accordingly

You will need to consider all renewal dates of RCDRs and EUTMS and account for the additional renewal fees, including the additional administrative burden.

In essence, there will now be a separate payment and renewal for EU rights and UK rights, which may also result in different dates of renewal.

Making note of this now provides a clear pathway for the future, and offer the opportunity to create an inventory of your IP rights and coverage.

9. Secure your domains

Check whether you have any .eu website domains and whether you need to update the registrant details or you should organise the migration of any important services and website which are dependent on a .eu domain to other domains (.net,.co.uk, .com etc.).

.eu Domain holders who are the subject of this change should have received notification to this effect, and will have hopefully made the adequate steps to protect their domain.

10. Act proactively not reactively (and get the right advice)

Brexit is a paradigm shift, and there are a whole host of changes which it brings to the fore. It is critical to identify the changes which will affect your business the most and address them assertively. If you are unsure seek advice from an IP specialist to get the information you need to act with confidence.

CONCLUSION

Brexit will impact IP in a number of ways. However, having a clear understanding of how it will impact your business and what to do about it ahead of time is key to success.

Virtuoso Legal is offering a limited number of FREE 15-minute IP and Brexit clinics without principal and founder Elizabeth Ward, to help businesses identify the key issues to address before (and after) 1st of January.

Click here to email Martin to request an appointment.  

ABOUT VIRTUOSO LEGAL?

Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide.

Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court.

In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique.

The firm and its professionals are ranked yearly in legal directories such as the Legal 500 and Chambers and Partners, cementing their status as a Top 2% law firm in the world.​