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BREXIP Part 1: All You Need to Know About Brexit and Intellectual Property

Author Rachel Nicholls

Whether or not we wanted it, Brexit is done, and the transition period is currently set to expire on 31st December 2020. It’s time to think about Brexit and Intellectual Property, or BREXIP as we’ve coined it at Sonder IP! As a business or brand owner it’s important to understand the impact of Brexit on your IP and to proactively manage your responsibilities to ensure your IP rights post Brexit are protected.

Brexit Implications for IP: What we know so far

  1. Existing EU Registrations: We know that existing EU Trade Mark and Design Registrations will transition to the respective UK Registers to create separate UK registrations, maintaining all of the filing and registration dates from the original EU registration.
  2. Pending EU Applications: We also know that applicants of pending EU Applications will have 9 months from the expiry of the transition period to request transition of the application to a separate UK application. Where transitioned applications are concerned, there will effectively be a second examination and publication process, meaning that previously simple EU Applications may face unexpected obstacles at the UK office, or likewise, that previously problematic EU Applications may progress smoothly before the UK office.

Brexit implications for IP: Contentious Actions

We know that the EUIPO will essentially drop any pending Oppositions based solely on UK rights, however we do not yet know how the office will deal with this.  If  previous actions of the EUIPO are anything to go by, there is a strong possibility that the process will be sudden and have a direct and immediate impact on ongoing oppositions or other contentious actions, and opponents and applicants need to bear this in mind when considering ongoing or new contentious actions.  In addition, applicants and opponents alike need to consider the transitioned UK application, and whether additional oppositions will be required or arise – we do not yet know quite how many additional UK oppositions are going to arise as a consequence of Brexit.

Brexit will impact almost all brands

Put simply, Brexit has far reaching implications for the world of IP, and will impact on almost any IP rights owner.  In particular, where you have any unitary EU trade mark or design registration, Brexit will have an impact, even if it is only insofar as your once unitary right will in the future be two separate rights – one in the UK, and one in the remaining 27 EU member states.  Effectively therefore, on the most basic of levels, your administrative and cost burden is likely to increase, but the implications could of course be much more far reaching, with an impact on your level of protection, your ability to operate in the EU and UK, the obstacles that you may face, your budgeting process, your historical agreements and contracts and any future decisions that you take.

Guidance on Brexit for IP rights owners

We want to make sure that you are as ready as you can be when the transitional period expires, and that your portfolio is in the best of health to stand the test of the changes that Brexit holds for you as IP owners.  Over the comings months we will be giving you practical hints and tips, including guidance on proposed timelines and recommendations on best practice, all of which will help you to navigate the Brexit process and to use your IP to your advantage.

How to manage the Brexit transition period to your IP advantage

To enable you to use the current transition period to your IP advantage we have created a Sonder IP Brexit and IP (BREXIP) timetable.

Download your Sonder IP – BREXIP (Brexit and IP) timetable

Our timetable shares key dates and tasks during the Brexit transition period for any IP rights owner. Each task is supported by an article detailing our strategic advice and rationale behind our IP recommendations. Each article will be shared in a timely manner on our blog, and the following topics will be covered from an IP and Brexit perspective:

IP strategy – conducting an IP audit to assess whether your IP portfolio meets the needs of your business.  Do you need all of your historical trade mark registrations, or can you strip your portfolio back?  Do you need to re-assess the scope of your protection?  Do you need to attend to separate UK renewals?  Do you need to assess your current use to ensure continued validity of your registrations in both the EU and UK?  What are your business’ aims and desires, and how can your IP support this?

Filings – do you currently have pending EU trade mark applications which will be impacted by Brexit, and what will be the implications?  What additional considerations will you need to have when considering future filings?  When should you consider dual filing in the EU and UK?  Are there any gaps in your protection that will need filling following Brexit?  Does your watching service require updating?

Appointment of agents – is it worth conducting an assessment of service providers?  Should you start putting together a list of your needs and requirements against which to assess your service providers?  When should you consider instructing UK agents in respect of transitioned EU applications/registrations?

Oppositions/contentious matters – will your oppositions conclude before the expiry of the transitional period?  Will you need to undertake separate UK oppositions, and do you need additional watch services in place?  Do you need to assess your grounds of opposition or your response to pending oppositions in terms of validity post-Brexit?

Transactional matters – considerations in respect of registrable transactions including licence agreements, mortgages etc recorded against EU registrations and the effect that Brexit may have on their validity

Agreements – conducting an audit of any existing agreements that you have in place, in particular licence agreements, to ensure compliance and effectiveness following Brexit

Brexit and IP: your next step

Our BREXIP timetable begins with a review of existing agreements and this article will be published at the beginning of April 2020. This is a key step within the transition period for all IP rights owners so please check our blog shortly for all the details. In the meantime, you can download our full color: Sonder IP – BREXIP (Brexit and IP) timetable or follow Sonder IP on Twitter and Linked In for our latest Brexit and IP updates.

Get ready for Brexit with an IP audit

Now is the perfect time to take stock of your IP portfolio with an IP audit and to run various health checks and reviews to ensure that you only carry through IP into the post-Brexit world that is fit for purpose and meets your needs.  You need to ensure that your business is best protected by your IP, and that it is in the best possible position to support your needs and desires in the changing Brexit climate. It is also a great opportunity to put in place a clear IP strategy that can be communicated throughout your business, and to set new budgets and decision making processes to ensure the continuation of IP best practice beyond Brexit.

Read our next BREXIP articles:

BREXIP Part 2: Conduct an IP agreement and IP License agreement review ahead of Brexit

BREXIP Part 3: Dual filing trade marks in the UK and EU ahead of Brexit

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From the everyday to the IP emergency, our accomplished Chartered Trade Mark Attorneys and IP Solicitors are driven to get the very best outcome for every brief for every client, every time! Sonder & Clay are a full service IP law firm with proven expertise and results in IP protection, strategy, disputes, and exploitation. Learn more about our IP services or get in touch with us for a complimentary IP audit today.

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