The impact of Brexit in the field of Industrial Property

It is well known to all that after a long process, finally on January 31, 2020 the United Kingdom left the European Union (EU). From that date, and until December 31, a transitional period begins during which the United Kingdom will continue to apply EU legislation, but will no longer be represented in the EU institutions.

In any case, for now the consequences that the exit from the UK may have for the different Industrial Property (IP) rights are not known with certainty, since the IP is a particularly sensitive issue affected by the new situation.

EU Trademarks and community designs

The EU Trademark Regulations (RMUE) and Community Designs (RDMC) will continue to apply in the United Kingdom during the transitional period ending December 31, 2020. This includes, in particular, all substantive provisions and procedural, as well as all the rules concerning representation in proceedings before the European Union Intellectual Property Office (EUIPO).

Therefore, all procedures before the EUIPO that entail grounds for refusal concerning the territory of the United Kingdom, prior rights originating in the United Kingdom, parties or representatives domiciled in the United Kingdom will be developed as before, until the end of the transitional period.

International Trademarks and industrial designs

In the case of international brands, according to the latest information published on January 30, 2020 on the website of the World Intellectual Property Organization (WIPO), “international registrations under the Madrid System for the International Registration of Marks (the “Madrid System”) that designate the European Union, including the designations made during the transitional period, will continue to take effect in the United Kingdom during this period”.

In addition, nationals of the United Kingdom and those domiciled or having a real and effective industrial or commercial establishment in the United Kingdom, and on whose behalf an application or registration is registered in the EUIPO, may continue to submit international applications using WIPO as Office of origin, during the transition period.

The same applies to international designs: “the international registers of the Hague System for the International Registration of Industrial Designs (the“ Hague System ”) that designate the European Union, including international registrations made during the transition period will continue to take effect in the United Kingdom during this period. ”

The Withdrawal Agreement itself provides that the United Kingdom will take measures to ensure that natural or legal persons that have obtained protection before the end of the transitional period for registered international brands or designs that designate the EU, under the Madrid System or the The Hague System, enjoy protection in the United Kingdom for your trademarks or industrial designs with respect to those international registrations.

Patents

In accordance with the latest information published on the website of the United Kingdom Intellectual Property Office (IPO) “the rights of Spanish holders of European patents with effects in the United Kingdom and PCT patents that have extended their effects in the United Kingdom United will not be affected and European patent agents domiciled in the United Kingdom may continue to represent applicants before the European Patent Office.”

However, in the case of Supplementary Protection Certificates (CCP), disagreements are foreseen, especially in relation to the manufacturing waiver regulated in Regulation (EU) 2019/933 of the European Parliament and of the Council of 20 of May 2019 amending Regulation (EC) No 469/2009 regarding the complementary certificate of protection for medicines, in force since July 2019. While the IPO's desire is to maintain the current systems and procedures, the applicable legislation emanates from the EU.

On the other hand, it should be noted that some specific areas of the patent procedure have been adjusted by the Patent Regulations approved in the United Kingdom in 2019, are the following:

• Cross-licensing with plant variety rights: As of January 1, 2021, community rights for plant varieties will no longer have effect in the United Kingdom. However, holders of overlapping patents and plant variety rights may apply for compulsory licenses based on UK breeder's rights to prevent one right from interfering with the use of the other. This will include community rights for plant varieties that become UK rights at the end of the transition period.
• Caution: As of January 1, 2021, the United Kingdom will be excluded from the civil judicial cooperation agreements under which the United Kingdom cannot request the security provided in its regulations for proceedings before the IPO from a resident in the EEE. This implies that any person residing outside the United Kingdom may be subject to the payment of said bond.

Otherwise, there will be no significant changes in legal requirements or application processes.