Q&A with Christopher Carroll, Leading IP Attorney at Burns & Levinson

1/19/21

Christopher Carroll

Christopher Carroll and Deborah Peckham from Burns & Levinson will be leading a free webinar, Brexit and Intellectual Property in Europe: What You Need to Know” and on January 21, 2021 from 1:00 pm to 2:00 p.m. ET. Carroll gives us a preview of some of the topics they will discuss.

Q. After bitter negotiations, the U.K. finally formalized its Brexit trade deal agreement with the European Union (EU), which went into effect on January 1, 2021. Give us an overview of what this all means and how it affects U.S. companies enforcing intellectual property rights in the U.K.

Carroll: The UK actually Brexited from the EU on January 31, 2020, but there was a transition period until December 31, 2020 to allow the sides to implement a new trade agreement between the UK and EU. It came down to the wire, but an agreement was reached. Intellectual property was obviously not as important an issue as free trade, fishing rights, the Irish border, and financial sector operations, but the UK and EU did agree on creating trademark and design rights in the UK that mirror these rights in the EU.

Q. What is the impact specifically on registered, pending and expired EU trademarks?

Carroll: The UK Intellectual Property Office (UKIPO) just confirmed that it successfully recreated (i.e., “cloned”) about 2 million EU trademarks and registered community designs in the UK by 11:00 pm on December 31, 2020. So existing UK trademarks and UK registered designs have been automatically created without the need for any actions by an owner. But US companies will still have to refile trademark applications and design applications in the UK within a nine month period.

Q. How are patents going to be affected? Are exhaustion of patent rights also an issue of concern?

Carroll: European patents are covered by the European Patent Convention (EPC) which is a separate treaty than the Treaty of European Union (TEU).Also, European patent litigation is handled in National courts. Hence, there is no significant impact on European patents.

Q. What about design rights for registered and unregistered designs in the U.K. – will this be more complicated to navigate?

Carroll: As I previously noted, the UKIPO has cloned EU registered community designs as UK registered designs. The term is up to 25 years like a registered community design. US companies may not have an unregistered UK design right because the US and UK do not have a bilateral agreement for such rights.

Q. Do companies need new post-Brexit strategies for tracking the renewals and maintenance of IP rights in the U.K.?

Carroll: Yes. US companies and their IP attorneys should be aware of the creation of trademark and design clones in the UK. US companies should expect their European agents handling matters at the European Union IPO (e.g., EU trademarks and registered community designs) to provide updated status information and/or appropriately docket the new UK rights. More importantly, there is a limited time-frame (e.g., nine months) with respect to possibly filing trademark and design applications in the UK.

Q. Any additional parting words of wisdom for companies that are worried about this change and what comes next?

Carroll: US companies should confirm that UK clones were created as soon as possible. A pending EU trademark and community design application should also be identified early to ensure that UK applications may be timely filed. Good communications between in-house attorneys, US IP attorneys, and European agents is crucial.

Carroll is a partner in the Intellectual Property & IP Litigation Group at the law firm of Burns & Levinson, practicing in the firm’s Boston and London offices. He has practiced extensively before both the U.S. Patent and Trademark Office and European Patent Office. He concentrates his practice on developing strategies for clients related to patents, trademarks, and copyrights in the U.S., Europe, and internationally. He can be reached at ccarroll@burnslev.com.

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