The impact of Brexit on Intellectual Property law

There will be changes to the laws surrounding intellectual property with the end of the Transition Period on 1 January 2021, irrespective of the outcome of current EU and UK negotiations on a trade deal.  Businesses with valuable IP rights need to be prepared.

Trade Marks: Owners of EU trade marks will still have valid EU trademarks in the remaining EU States, but existing EU Trade Marks (EUTMs) 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 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. Existing EUTMs will still protect trade marks in member states and UK businesses can still apply to the EU IPO for an EUTM.

Registered Designs: as Registered Community Designs (RCD) no longer apply in the UK, the IPO will create a re-registered design for every RCD.

Unregistered Designs: To ensure that all Unregistered Community Design Rights (UCDR) continue to be protected and enforceable in the UK after 1 January 2021, the government has created a new Supplementary Unregistered Design (SUD) right

Database rights: for sui generis database rights, a database created in the UK after 1 January 2021 will no longer be protected in the EEA through database rights.  Database rights existing before 1 January 2021 will continue to exist in the UK and the EEA for the rest of their duration.

Patents:  The European Patent is independent from the EU and so should not be directly affected by the end of the Transition Period. You can continue to apply for a European patent through the IPO or the European Patent Office (EPO) using the European Patent Convention.

Copyright: Protection of works by copyright isn’t harmonised across the EU and is largely governed by international treaties, meaning the effect of the end of the Transition Period will be limited.  Most UK copyright works will still be protected in the EU and the UK.  However, arrangements in certain areas will change, such as cross-border portability of online content services, reciprocal protection for database rights and the orphan works exception.

Parallel Trade: Whilst parallel imports into the UK from the EEA are unaffected, businesses parallel exporting IP protected goods from the UK to the EEA may need to seek right holder’s consent as from 1 January they may no longer be considered exhausted in the EEA.

EU domain names: after 1 January 2021 these will no longer be able to held by UK entities.

General: In order to minimise the risks to your business as a result of changes to IP rights following the end of the Transition Period, 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 still defined as the European Union, this requires 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:   If you have a pending EUTM registration, you have 9 months from 1 January 2021 to apply to register the same trade mark as a UK right.  As the UK will remain a member of the World Intellectual Property Organization (WIPO), you might 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.

Registered Designs: If you have an application for an RCD which is not registered or for which you have deferred publication, you have 9 months from 1 January 2021 to apply for protection.

Unregistered Designs: To ensure that all Unregistered Community Design Rights (UCDR) continue to be protected and enforceable in the UK after 1 January 2021, the government has created a new Supplementary Unregistered Design (SUD) right 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.  Copyright protection for databases will not change.

EU domain names: businesses with .eu domain names will need to transfer them to an EU entity if they wish to retain them. Otherwise their registrations will be cancelled and the domain released for others to register.  Alternatively, consider transferring to a different top level domain such as .com.  Ensure you have a detailed migration plan for any critical websites or associated email addresses using .eu.

Parallel Trade: Consider your position if you are parallel exporting to the EEA, you may need to contact the rights’ holder for permission.  If you own IP rights in goods which are parallel exported form the UK to the EEA you may want to consider if you want to permit this from 1 January 2021.

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.