Megan Jefferies from Thrings answers our questions about recent changes to Intellectual Property rules

By Nick Batten on 15 January, 2021

If a business has a European trade mark or portfolio of European trade marks registered, do those marks continue to give them protection against infringement in the UK after 31st December 2020?

No. EU trade marks no longer cover the UK. However, each EU mark will be cloned and an equivalent UK mark automatically created in the UK trade marks register with the same filing date as the EU ‘parent.’ 

What if an application for an EU trade mark was made before 31st December but hasn’t been granted yet?

Any applications for EU marks currently pending will not be automatically cloned but the applicants will be granted a grace period of nine months within which they can apply for a UK mark.

Is there anything a UK business needs to be aware of after the end of the Transitional Period in relation to maintaining its EU trade mark protection?

If a UK business has an EU mark it would be well served to ensure it can prove the mark has been used within the EU as well as in the UK. 

How will leaving the EU affect IP rights such as patents, copyright and design rights? 

There will be little if any change to the patent regime. The position regarding design rights is pretty much the same as described in relation to trade marks. Copyright, in the UK and Europe is an automatic right, not one which requires registration, so there are not the same administrative issues around our leaving Europe. 

Turning to trade and IP rights, let’s take the position of a UK business selling the goods of an EU business. The UK business may have sold the same goods in the UK and the European Economic Area (EEA) before 31st December 2020. Is it still able to export to the EEA after the end of the Transitional Period?

Putting goods on the market in the UK, by or with the consent of the Intellectual Property Rights (IPR) holder, will not exhaust the IP rights in the EEA. UK businesses should therefore seek the consent of the rights holder before exporting to the EEA.

Would that consent need to be explicit?

The rights holder must expressly or by inference have consented to the goods being placed on the market in the EEA. 

To find out more about Megan Jefferies click here. Visit Thrings Solicitors online at: www.thrings.com

Pictured above: Megan Jefferies, Partner at Thrings