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 .
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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 .
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Megan Jefferies is a Partner in the Commercial Litigation and Dispute Resolution team at Thrings Solicitors .
Megan works with clients across the South West specialising in intellectual property disputes , including cases involving copyright infringement , trademark infringement , passing off , design right infringement and Company Names Tribunal disputes .
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