Brexit’s effect on alternative types of intellectual property

Kerman & Co. website
December 1, 2020 Advisory

On 13th August, we set out how the main types of intellectual property were affected as a result of Brexit (trade marks, designs, copyright and patents) which can be found here.

Now that the end of Brexit’s transition period is fast approaching (31 December 2020), the UK Government and the UKIPO have released news of further changes to intellectual property law that were previously uncertain.  Because we just cannot get enough of Brexit, we set out the government’s and UKIPO’s most recent announcements below.

Address for Service at the UKIPO

UK practitioners are pleased to learn that the rules surrounding what is permissible as an address for service in front of the UKIPO is changing, that will take effect for all new proceedings after the transition period.  The address for service can be the owner’s designated address of correspondence, or the address of the owner’s representative, if applicable.

Currently, and until 31 December 2020, an address for service provided to the UKIPO can be in the UK (including the Isle of Man), the Channel Islands or the European Economic Area (EEA).

However, from 1 January 2021 onwards, subject to legislative implementation, the address for service provided in any new proceedings cannot be in the EEA.  The address provided must be in the UK, Channel Islands or Gibraltar.

In other words, if an owner does not provide an address in the UK or Channel Islands they cannot act and a representative will need to be appointed that does have an address in these permissible areas.

‘Proceedings’ include trade mark, design or patent applications, oppositions and cancellation (revocation/invalidity) proceedings.  If any of these are filed after 1 January 2021, an address for service in the permitted territories must be supplied in order to proceed.  Indeed, if this requirement is not fulfilled, rightsholders may be subject to a loss of rights as a result.

The exception to this rule is renewals of IP rights, which do not require the address to be updated in this respect.  Similarly, if an owner of a new ‘comparable’ trade mark or design right wishes to oppose a UK trade mark application on the basis of this right, an address for service in the EEA is still acceptable for a period of three years after the comparable right is created (i.e. 1 January 2024).

Any proceedings commenced before 1 January 2021 will not need to update the address for service until 1 January 2024, after which a UK, Channel Islands or Gibraltar address will need to be provided.

Trade between the UK and EEA

As has been well publicised, uncertainty abounds in relation to the landscape of trade between the UK and European Union (EU) after expiry of the transition period.  There is, however, some guidance on IP-related goods and parallel trade, which may affect UK businesses going forward.

Currently, the EU has in place a system of ‘regional exhaustion’.  Briefly, an exhaustion of rights means an owner of an IP right that places, or agrees to the placing of, its product or service onto the market can no longer exclusively exercise the IP right belonging to that product/service – i.e. generally, they cannot stop the redistribution/reselling of that product or service.  ‘Regional exhaustion’ implemented by the EU means that an IP owner cannot rely on its national legislation to overcome this exhaustion of rights once the product or service has been placed into the ‘single market’.  The purpose of this is to facilitate goods being able to move freely in the EU marketplace.

Of course, the scope of countries that ‘regional exhaustion’ currently applies to, is changing after the transition period.  One of the consequences of this is that goods placed in the UK marketplace by, or with the consent of, the rights holder after the transition period (i.e. 31 December 2020) will no longer be exhausted in the EEA.  This may mean that distributors parallel exporting those goods from the UK to the EU will need the rightsholder’s consent.

The same does not apply the other way around: goods placed in the EU marketplace after the Transition Period will continue to be exhausted in the UK. Parallel imports into the UK from the EEA, therefore, will be unaffected.

UK businesses that currently export, or have consented for third parties to export, their legitimate goods (that are protected by IP rights) may need to provide consent to this after 1 January 2021, therefore it is a good idea to review resellers and distributors if necessary.  Equally for these resellers, check whether permission from the rightsholder is required.

These changes to parallel imports and exports may change due to the ongoing trade negotiations with the UK and EU, and we’re keeping our eyes peeled for any such developments.

Geographical Indications

The withdrawal of the UK means that EU law on geographical indications (GIs) of goods and services will no longer apply to the UK after the Transition Period.  GIs were introduced by the EU to help promote and protect agricultural products and foodstuffs within the EU market by indicating their protected designation of origin (PDO), protected geographical indication (PGI) or traditional specialities guaranteed (TSG). GIs were put in place in order to protect products that genuinely originated from or were produced in a certain geographical area, so that consumers could easily identify genuine products, owners could market their genuine products more easily and strict action could be taken against proprietors of products falsely claiming a geographical origin.

PDO has the strictest criteria to meet for food producers – typically, the ingredients must be exclusively sourced from the particular region to which it identifies with. Examples of PDO products are Prosciutto di Parma, Jersey royal potatoes, Cornish clotted cream and, of course, Champagne.  PGI is granted to products where a percentage of its ingredients originate from the region ), or at least one part of the production process.  Plymouth Gin, Irish Whisky, and a classic Cornish Pasty have all been assigned as PGI products.  The loosest GI term is TSG, which means a product in some way can be associated with a geographical region, but the ingredients do not necessarily need to have been sourced from there or the product was not made exactly in the area.  Mozzarella, Jambón Serrano and traditional farmfresh turkey are all examples of TSGs.  As is evident, some of the best food and drink belongs to the GI group, and I make no apologies if suddenly a feast to celebrate these protected goods sounds extremely appealing…

Back to business: as of 1 January 2021, the UK will no longer be able to use the EU’s standards and regulations set out in the GIs, nor will UK-based food and drinks be able to designate the labels that the EU created. The only exception to this (provided in the Withdrawal Agreement) is that stock of the geographical indications in the EU after the transition period remains protected in the UK.

Instead, the UK has announced that it will introduce its own GI schemes, which will still fulfil the World Trade Organisation’s obligations.

Producers will need to apply to the relevant scheme in order to protect their products both in the UK and EU, and UK producers will need to secure protection in Great Britain before applying for EU protection (the same does not apply to Northern Ireland producers, who can skip the GB scheme).

This also means that products which have successfully gained UK GIs will need to bear new labels. The official logos that have been created for the UK are:

Fortunately for producers producing and selling in the UK, they will not need to immediately alter their packaging to incorporate the new UK GI logos – the UK Government has provided a deadline of 1 January 2024 that UK GI logos will be mandatory.

Also helpfully, GB GI products that are sold/protected in the EU (such as Scotch Whisky) may continue to use the EU label in the UK (in addition to the UK logo) after the Transition Period. For products originating from Northern Ireland, they must continue to use the EU label, whereas the UK GI logo is optional.

Inevitably, there will be many more developments to unfold as a result of ongoing negotiations between the UK and the EU and what legislation the UK Government makes over the next coming years.

As we fast approach Christmas, our hope is that the UK and EU negotiators can stop whining and use brut force to find a way through the trade discussions so that we can, if only for a short period of time, forget about support bubbles and get out the real ones.  Fizz the season!

Originally published at prior to the firm’s combination with Armstrong Teasdale in early 2021.



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