Brexit has happened, and the transition period ends on the 31st December. Have your IP assets, contracts and agreements been reviewed accordingly? If not, talk to us! Here are some quick tips on what you need to consider:
IP Rights after Brexit
From the 1st January 2021, EU Trademarks (EUTM) and Community designs will no longer offer protection rights within the UK. Current EUTMs, licenses or agreements covering Intellectual Property (IP) rights will remain valid within the EU, while in respect of registered IP rights, the UKIPO will need to create a comparable UK trademark or design right for IP holders and owners. These cloned rights, being separate from those of the EU, may require amendments to or redrafting of existing contracts referring to the EU to acknowledge existence of the new rights and ensure that they remain recognised under existing agreements.
New legislation within the UK ensures that licenses or security interests recorded against an EUTM or Community design, subject to any specific conditions therein, will continue to hold legal effect. Zacco can assist with amending current or drafting new rights agreements and help you to fulfil your obligations to inform potential licensees of their existence. This includes identifying if the creation of said rights would potentially breach existing contractual obligations or agreements.
The UK will also remain part of the European Patent Convention and, as such, applications to the EPO, as well as existing patent validity, will remain largely unaffected. The European Patent Office is an independent international organisation, rather than an EU agency, and therefore Zacco can continue to represent your interests from either our UK or offices within the EU without additional measures.
With Brexit, the UK has ceased to be a member of the European Union and, following the end of the transition period, any agreement that refers to an ‘EU’ jurisdiction may no longer provide the same level of protection within the UK. Even if an IP agreement or contract acknowledges the UK as separate from the EU, it is still considered best practice to identify if the change will have any impact on its validity. Such an impact might include, but is not limited to, Freedom to Operate (FTO), existing injunctions, , settlement restrictions and other impositions. Now is the time to act and conduct a thorough review of all your IP assets and agreements, ensuring that you avoid any unwanted surprises following the UK’s withdrawal..
The Next Steps
Time is running short but Zacco is here to help with the review of your license and other agreements. These may simply require an addendum or basic redraft to identify and define the EU and the UK as separate independent territories and jurisdictions.
As to trademarks, designs, or other IP assets. . Zacco can assist with advice on your need for additional protection and guide you through the reregistration process, acting on your behalf to ensure that your IP is updated and, where necessary, create new registrations to ensure that your IP is protected across the UK and Europe after Brexit.