The impact of Brexit on Intellectual Property law

The laws surrounding intellectual property is one area which will definitely be affected by Brexit, whatever the shape of the eventual trade deal post Transition, as protection of IP at a pan-European level has been an area of legislative activity for the EU for some time.

Whilst the Government has brought in some laws aimed to protect rights potentially affected by Brexit, there are still areas where the reciprocal nature of the regimes would require a trade deal to cover the rules once the Transition Period has ended.  Rights holders should also be aware that the arrangements the Government has put in place may not be permanent, and also that the EU has not always reciprocated: for example the EU has not agreed to recognise the exhaustion of IP rights for EU products put on the market in the UK, and so IP rights owners in the EU could prevent the export of UK goods into the EU.

Trade Marks and Designs: Owners of EU trade marks will still have valid EU trademarks in the remaining EU States, but existing EU Trade Marks (EUTMs), and both RCDs and UCDs, no longer apply in the UK since the UK has left the EU. The UK government has brought in legislation to ensure that those holding existing EUTM or RCD registrations will have a new UK equivalent or “clone” right granted automatically and without charge, which will aim to provide continuing protection and enforceability.  Filing, priority and seniority dates are all retained.

Database rights: for sui generis database rights, a database created in the UK after 31 January 2020 will no longer be protected, and UK rights owners may find their rights are unenforceable in the EEA. The Government has indicated that it will implement similar domestic law for the protection of databases made in the UK.

Patents: pan-EU patent rights do not exist yet (and Germany has delayed ratification of the Unified Patent Court Agreement until the implications of Brexit are more clear) so there will be limited direct effect on patents from Brexit. The European Patent is independent from the EU and so should not be directly affected by Brexit.

Copyright: Protection of works by copyright isn’t harmonised across the EU and is largely governed by international treaties so it shouldn’t be affected by Brexit,.

General: In order to minimise the risks to your business as a result of changes to IP rights following Brexit, it is advisable to:

 

  • Check your IP licences, co-existence agreements, brand-sharing agreements etc. to see how the territories are defined. If territories which are meant to include the UK are currently defined as the European Union, this will now require amendment.

 

  • Check whether any licences or security interests have been recorded against a EUTM registration, as these may also need to be recorded against the cloned UK trade mark.

It may also be wise to ensure you are using your IP rights widely, preferably in one or more other EU countries in order to be able to demonstrate use in the EU.

Trade Marks and Registered Designs:   for new registrations covering the UK after Brexit, you will need to consider registering separately in the UK and the remaining EU states. Although as the UK will remain a member of the World Intellectual Property Organization (WIPO) post Brexit, consider whether filing an application through WIPO may be the most appropriate option if you will use your mark in the UK and/or EU as well as countries such as Japan, China and the USA.  Consider also if you want to opt out of the new UK equivalent (cloned) right

Unregistered Designs: As the government is proposing a new Supplementary Unregistered Design (SUD) right, to ensure that all Unregistered Community Design Rights (UCDR) continue to be protected and enforceable in the UK. Consider how, when and where you first disclose your designs in order to establish unregistered protection in the UK and the EU as first disclosure in the EU will not create UK protection under SUD .

Database rights: the Government has recommended that UK rights holders look to other methods of protection, for example restricting licensing agreements or copyright where available.

.EU domain names: will no longer be able to held by UK entities, which will need to transfer them to an EU entity if they wish to maintain them. Otherwise their registrations will be cancelled and the domain released for others to register.

UKIPO guidance on how it plans to manage the numbering of registrations, including how they will be distinguished from existing UK trade marks.

Government guidance can be accessed at: Changes to design rights

If you have a query about any aspect of IP, please contact Philip Bilney at philip.bilney@crippspg.co.uk.