Kate O’RourkeJust over six years ago, the United Kingdom voted to exit the European Union.  With most of the provisions affecting the protection and enforcement of Intellectual Property settled, now is a good time to reflect on the impact on brand owners and the future opportunities.

The immediate impact

The transition period for the departure of the UK from the EU Intellectual Property Office (EUIPO) expired at 11 pm UK time on 31st December 2020.  At that moment, over one million new trademark registrations appeared on the Trademarks Register of the UK Intellectual Property Office (UKIPO).  These “comparable” registrations were clones of all of the trademark registrations on the EUIPO Register at that time.

At the same time, over 300,000 “re-registered” designs appeared on the Designs Register of the UKIPO.  These registrations were clones of all of the existing design registrations on the EUIPO Register.

Owners of EU trademark applications that were pending at the end of the transition period had a deadline of 30th September 2021 to re-file in the UK and retain their filing, priority and seniority dates.  Around 16,000 applications were filed in those 9 months.

The UK Trade Marks Act 1994 and the Registered Designs Act 1949 did not materially change at the end of the transition period, and the case law of the Court of Justice of the European Union (CJEU) became part of UK law.

Subsequent surge in demand

Many brand owners now pursue a dual filing strategy, often using the Madrid System to file International Registrations designating both the UK and the EU.  The UKIPO has reported an increase in demand of 43% in trademark filings in 2021/22 and 72% for design filings over the previous year. Interestingly, analysis shows that the Covid pandemic contributed to the increase in numbers with new businesses being set up or businesses diversifying in response.

Consequences of increase in numbers

Clearing trademarks in the UK is now exponentially more difficult than pre-Brexit. Larger volumes mean more and more marks are already taken and choosing a new mark that doesn’t infringe existing IP rights is more of a challenge. This makes trademark searching even more important when selecting names for new companies, products or services and watching services essential for brand owners to be alerted to potential infringements.

Change in parallel imports regime

The UK government has confirmed its decision not the change the rule that products put on the market in the EU by or with the consent of the EU rights owner can continue to be imported into the UK without any barriers.  In contrast, products branded with UK marks can no longer move freely into the EU and businesses exporting IP protected goods from the UK may need the consent of the EU right’s holder.  Therefore, UK brand owners need to consider seeking their own EU registration as even if they may not need it themselves, a registration may stop someone else registering it and then importing those products into the UK.

UK Customs enforcement measures

The Customs authorities can help fight counterfeiting by detaining products suspected of infringing IP rights. IP rights’ owners need to file an Application for Action (AFA) to take advantage of this procedure and ensure that they are alerted to any imports of counterfeit goods. Before Brexit, one single AFA covered the whole of the EU, including the UK. However, the EU arrangements no longer cover the UK and brand owners need to make a separate AFA for the UK or risk not being notified by UK customs.

Restrictions on Address for Service

Since 1st January 2021, all new applications at the UKIPO must give an address for service in the UK, Gibraltar or the Channel Islands. This also applies to new proceedings. Previously an address in any EEA country was acceptable.  There is an exception for proceedings in respect of comparable trademarks and re-registered designs, but only until the end of 2023.

The Future

For most brand owners, the IP related aspects of the Brexit transition have been relatively smooth. There is still substantial harmonisation between the relevant EU and UK law and the UK courts have not shown any appetite for departing from the jurisprudence of the CJEU.  However, brand owners need to be conscious of the final Brexit-related deadline on 31st December 2023 to update the address details on their registered rights, and to be alert to political pledges of a “bonfire” of EU rules which might bring with it further challenges.

Written by Kate O’Rourke, Partner and Head of Trademarks at Mewburn Ellis



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