Precautions for intellectual property protection in Britain after Brexit
The Korean Intellectual Property Office (KIPO) requests that its corporate users take steps to protect their intellectual property rights in Great Britain in order to not face harm due to Brexit.
EU Trademarks and Registered Community Designs which are registered with the European Union Intellectual Property Office (EUIPO) will not need separate requests since such a right will automatically be succeeded to a right in Britain by the UK Intellectual Property Office (UKIPO) after Brexit.
However, UKIPO plans to accord only new registration numbers without issuing new registration certificates for such automatically succeeded trademarks and designs, so one needs to be cautious and monitor one’s rights in the case that a corresponding right is owned.
Right holders who specifically do not want their rights to be succeeded automatically since they have not used those rights in the UK and no longer intend to use those rights should make an Opt-out request with UKIPO.
If one is planning to file an application in order to protect a trademark or a design right in Britain after Brexit, the application should be filed with UKIPO, not with EUIPO. This is because EUIPO is an affiliated institution of the EU, and Britain will loose its qualification as an EUIPO member nation after Brexit.
Also, if a case was filed with EUIPO and its examination is not completed before Brexit, the corresponding applicant should refile such trademark or design application with UKIPO within 9 months from the Brexit starting date in order for the application’s priority date and filing date to be recognized.
Meanwhile, in the case of patents handled by the European Patent Office (EPO), no changes will occur after Brexit. As EPO is not an affiliated institution of the EU, Britain’s member nation qualification thereof will not change after Brexit.
Regardless of Britain’s efforts to minimize confusion, appropriate counteractions such as opt-out requests, separate filings with UKIPO, refilings within the allowed period, etc. are inevitable for right holders and applicants. Accordingly, KIPO asks for corporations’ cautious attention to these matters in order to avoid potential damages that could be caused by Brexit.