Trade Marks and Brexit – What Happened and What’s Next?
11th February 2021
The United Kingdom has introduced a new procedure for notifying UK IP rights to the customs authority, Her Majesty's Revenue and Customs (HMRC), now that they have departed from the EU system. Customs notifications are crucial to enable the HMRC officials to act on any suspected IP right infringements found in imports to, and exports from, the United Kingdom.
The United Kingdom enacted legislation implementing a stand-alone UK system for customs notifications, the Customs (Enforcement of Intellectual Property Rights) (Amendment) (EU Exit) Regulations 2019 (514 of 2019), but which largely maintains the structures and procedures set out in EU Regulation 608/2013. Thus, the deadlines for action, the ex officio procedure where a seizure is made but no current customs notification is in place, the simplified destruction procedure and the 12-month extendible term for notifications all remain unchanged.
Customs notifications with effect in the European Union can no longer be filed through the UK authorities as of 1 January 2021, and EU customs notifications can no longer cover the United Kingdom as of that same date. Any EU-wide applications filed through the United Kingdom before 31 December will continue to have effect in the United Kingdom, but will lose effect in the European Union. Thus, IP rights holders wishing to have customs notification protection in the United Kingdom will have to use the new UK procedure henceforth, and those also wishing to have EU protection will have to use the pre-existing EU procedure and file that application through an EU member state.
The new UK procedure uses an online application form accessed via a UK Government Gateway User ID and which populates the form by means of drop-down options. It also permits useful information to be uploaded, such as information on identifying the genuine goods or counterfeits, genuine channels of distribution and previous examples of counterfeits encountered. This information can improve the effectiveness of the notifications.
The subject matter of a new UK customs notification is a UK national right, whether a trademark, patent, design or copyright, and whether filed directly in the United Kingdom or through an international system designating the United Kingdom, such as the Madrid Protocol. It is also important for IP rights holders to cite the correct UK cloned registration number for their EU trademarks (EUTMs) and registered Community designs (RCDs) which came into existence on 1 January. HMRC will reject any applications citing the EUTM/RCD numbers as they no longer have effect in the United Kingdom as from 1 January.
The United Kingdom and European Union have agreed special terms regarding the relationship between Northern Ireland and the Republic of Ireland. Thus, an application for action can be specified to relate only to Great Britain (England, Scotland and Wales), only to Northern Ireland, or to both Great Britain and Northern Ireland. The regulations also specifically state that the changes to the system do not have effect in relation to goods entering Northern Ireland from the Republic of Ireland or exiting Northern Ireland to the Republic of Ireland (Regulation 1(3)).
As with many Brexit changes, the immediate effect is administrative, but with little substantive change. However, now that the UK and EU systems are no longer tied together, substantive changes will emerge over time, so UK and EU advice will be required for IP rights holders to keep up-to-date with changes to the law as well as to the procedures.
This article first appeared on WTR Daily, part of World Trademark Review, in January 2021. For further information, please go to www.worldtrademarkreview.com
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