Intellectual Property rights are largely territorial, they must (mostly) be registered in order to be enforceable and you must register in the territories in which you want to be protected. For many decades, we have operated within a harmonised IP regime within the EU and post Brexit, we are now no longer within that regime, although we are still bound by some of the international treaties like TRIPS (the WTO Agreement on Trade Related Aspects of IP) and WIPO.
Elements of intellectual property rights affected by Brexit
Intellectual property rights affected by Brexit include designs, copyright and patents, but trade marks are likely to be the most affected. Below we set out the ways that each element will be affected.
Brexit and Trade Marks
Of all the intellectual property rights, international trade mark practice and registered designs are likely to be the most impacted by Britain’s leaving the EU.
The impact of Brexit on our existing national trademark registration system will be minimal And we continue ‘life as usual’ with the UK Intellectual Property Office (IPO).
In respect of international trade marks, we have two ways of protecting them:
- As an EU trade mark protecting the whole of Europe in one application; and/or
- As an International Registration (an IR) under the Madrid Protocol System whereby we choose our international territories and hop around the world replicating an existing base registration.
For both EU trade marks and IRs – trade marks that have been registered before the end of the transition period have already automatically been granted a comparable UK registered trade mark, for the same sign and covering the same goods and services. The filing date of the comparable UK trade mark is the same as that of the EUTM or the IR on which it is based. So essentially, we end up with an EU (or IR) registration AND a UK registration.
In respect of pending EU or IR trade mark applications that were not registered by 31 Dec 2020, going forward these application will fall away and there is a period of 9 months from Jan 2021 in which it is possible to file a separate identical UK trade mark application with the UK IPO (paying the IPO’s fees) and claim the filing date of the prior EU or IR application that was still pending at the end of the transition period.
For clients using large firms of trade mark attorneys, which have offices based in the EU, clients will continue to be able to be represented in the EU by their existing trade mark attorneys.
For clients with attorneys based solely in the UK, we have now lost representation rights before the EUIPO. This means that we will need to treat the EU as we do any other ‘international’ territory and instruct local agents. This is something that we are all very used to doing and in practice, the only impact will unfortunately, be on costs.
It is worth mentioning that in respect of unregistered brand names– the common law right of passing off (where you assert that you have a reputation under a particular name and that a third party is trading off your reputation) remains unaffected by Brexit.
Brexit & Designs
Designs are complicated!
There are two separate systems, the UK and the EU and within each system there are two different regimes – for registered designs (which must have ‘eye – appeal’ and protect the appearance of the whole or part of a product) and for unregistered designs (which arise automatically and protect the shape or configuration of the whole or part of an product).
As with trade marks, the UK national design registration and unregistered design right systems will be largely unaffected by Brexit and business continues as normal.
However, Registered Community Designs (RCDs) and the related Unregistered Community Design right (CDR), are governed by EU Regulation and are affected in a similar manner to trade marks.
If you had a ‘Registered Community Design’ that has been registered by the end of the transition period , this has automatically been granted an equivalent UK national registered design for the same design.
In respect of any RCD applications which were pending at the end of the Transition Period, again, you have 9 months to file the corresponding identical design application with the UK IPO.
Holders of an unregistered Community design-right (CDR) which arose before the end of the transition period have, in a similar manner, automatically become the holder of an equivalent UK unregistered design right affording the same level protection.
Brexit and copyright
Copyright is a national right that each country provides separately and independently. Therefore our UK laws on copyright remain unchanged.
However, copyright laws are largely harmonised internationally by a number of treaties and despite Brexit this will also largely remain unchanged.
Therefore, the majority of UK copyright works (such as books, films, photographs, drawings, content and music) will still be protected in the EU because of our continued participation in the international treaties on copyright.
This applies to works made both before and after 1 January 2021.
Brexit and patents
Basic patent law in the UK has not changed following Brexit. The UK Intellectual Property Office will also continue to grant UK national patents just as it always done.
The position in the EU also does not change – the UK continues to be a contracting state to the European Patent Convention (EPC) which is the international agreement that established the European Patent Office, which itself oversees the examination and grant of European Patent applications.
The EPC is entirely separate from the European Union and has approximately 40 contracting states including all the EU countries but also many non-EU ones – now including the UK.
The existing patent litigation system will also continue as before. What will be impacted is the proposed Unified Patent Court (UPC) which is not yet up and running. Although the UK had previously ratified the UPC Agreement, now that we have left the EU, we have withdrawn from the UPC and will no longer be able to participate in it, as and when it comes to fruition.
Brexit and…. Legal practicalities
In terms of legal practicalities – following our departure from the EU the courts in the UK will continue to have jurisdiction on issues of infringement and validity of intellectual property rights covering the UK only. We will no longer be able to litigate or question EU IP rights in the UK courts.
For international litigation commenced in the UK on or before 31 December 2020, but not yet concluded, the Brussels and Lugano regimes (which govern service of proceedings, jurisdiction and enforcement between the UK and the EU and EEA) will continue to apply until the conclusion of the litigation.
However from 1 January this year, both Brussels and Lugano regimes have been replaced by the common law.
Our common law regime is already well established and governs service of proceedings, jurisdiction and enforcement between the courts in the UK and other non EU/EEA countries like the USA and we now simply extend this to the EU and EEA.
So what do we need to be thinking about from a contractual point of view?
Those licences of IP rights which are in force on 31 December 2020 authorising acts in the UK which would otherwise infringe an existing EU IP right will, continue after Brexit to authorise such acts in respect of the extracted comparable UK registrations.
Going forward, thought should be given with regard to territorial scope of IP licences particularly now that delineation is now possible between the UK and the EU. So we will be able to grant licences separately in the UK and the EU (including on different terms) in a way that we have not been able to do previously.
The UK’s withdrawal from Europe and corresponding treaties will make it easier for customers to attempt to litigate in their domestic courts. In order to avoid this scenario, it is important to include an exclusive jurisdiction clause and exclusive law clause in favour of England, unless you have good reason not to.
The UK has now left the single market and the position with regard to the doctrine of exhaustion of IP rights and parallel imports has changed.
Exhaustion of rights meant that the placing of goods on the market in any EEA country by the owner of the relevant IP rights in those goods, or with their consent, generally exhausts the owner’s ability to enforce their IP rights in those goods to prevent re-sale anywhere else in the EEA. Makes sense – it prevented artificial trading boarders within the EEA based on IP rights.
Despite Brexit, in the UK, we will maintain the existing exhaustion regime. Placing goods on the market in the UK and/or the remaining EU/EEA countries will continue to exhaust relevant IP rights in the UK.
But this is no longer the position in Europe and from 31 Dec 2020, the owner of IP rights in the EU or EEA countries will be able to enforce such rights to prevent import into the EU/EEA of genuine goods placed on the market in the UK.
What should right holders do?
Practical steps that can and should be taken now include the following considerations:
- Review EUTM and RCD portfolios to check that all rights have now been given a corresponding UK national registration.
- If you have any EU rights which are still in their application stage, please speak to us as soon as possible, as the application will not be replicated automatically on to the corresponding UK Register and a separate application will need to be made to the UKIPO.
- If you have unregistered Community Design rights, speak to us urgently to ensure that you are aware of the corresponding rights in the UK.
- Coexistence agreements, licences and other IP agreements that cover the EU should be varied specifically to include the replicated UK rights unless there is evidence that such documents were not intended to have effect in the UK. For this reason, we recommend ensuring that the territory clause in agreements for all ongoing matters which include the EU also includes the UK separately.
Before the end of the transition period, we reviewed all EU trade marks and registered designs for which this firm is the recorded representative and we contacted all clients who are owners of these rights. If we are not currently managing your trade mark or design portfolio and you would like us to help you, please email me or Kate Mears for further assistance.
For a full overview of the intellectual property services we provide please visit our Intellectual Property page.
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