What Happens to Your IP Protection and Policies If Brexit Is a No Deal

Your IP is your business. Here Karen Holden, Founder, and Christine Zembrzuski, IP specialist at A City Law Firm, suggest being proactive, not reactive.

EU REGISTERED TRADE MARKS AND COMMUNITY DESIGNS

EU registered trade marks and designs will remain valid in the remaining 27 EU member states. All EU registered trade marks or registered community designs will have a new UK equivalent trade mark or design granted when Brexit is implemented.   The new UK trade mark or design will have the same effect as if the trade mark or design was registered under UK law.  Therefore, the new UK trade mark or design will be subject to a separate UK renewal date and renewal fee and, as a new distinct IP right, it may be assigned and licensed separately from the current EU trade mark or community design.

On the date that we exit the EU, if your business has a pending EU trade mark application or community design application, for 9 months (from the date of exit) you will be able to refile a UK trade mark  or design application, retaining the original date from when you filed the EU application.  The UKIPO will acknowledge the EU filing date and any claim to earlier priority.  However, you would need to pay the applicable UKIPO fees for the refiled UK trade mark or design.  Please note, you will still be able to apply for an EU trade mark or community design after Brexit.

ACTION REQUIRED – Ensure that your UK trade mark or design is refiled within 9 months of the exit date.

UNREGISTERED COMMUNITY DESIGNS

The protection afforded to unregistered design rights, which arises automatically once the design has been recorded or an article has been produced, differs between the UK and EU.

In the UK, the unregistered design protects the shape or configuration of the whole/part of an article, whereas, the EU unregistered design extends the protection to encompass the appearance (surface decoration) of the whole/part of the product.  Whilst the EU unregistered design protection is wider in its application, the scope of the protection is limited to 3 years after the design was first made available to the public within the EEA. In the UK, the design protection does not encompass surface decoration, however, protection is granted for up to 15 years.

The UK government has stated that they will ensure that all unregistered community designs in place at the time of Brexit will continue to be protected within the UK for the remainder of the design right.  The UK will also create a new unregistered design right in the UK to mirror the rights afforded by unregistered community designs, known as the supplementary unregistered design right.

COPYRIGHT

Within the UK, copyright and related rights are governed by the Copyright, Designs and Patents Act 1988 (the CDPA). Copyright subsists in literary, dramatic, musical, artistic works, films, sound recordings, broadcasts and published editions, encompassing, databases, computer programs (source code), drawings, photographs and works of artistic craftsmanship.  Copyright arises automatically (subject to certain conditions) with no registration or fees to pay and is a national right which is harmonised internationally by numerous treaties. Therefore, after Brexit any UK and EU copyright protected works will remain protected due to the international treaties that govern copyright, which are not dependent on our membership of the EU.

DATABASES

‘Sui Generis’ (unique) database rights were introduced by the EU and implemented into UK law (via the Copyright and Rights in Databases Regulations 1997), which protects your database in the same way as the CDPA, however, the scope of protection is broader as protection arises if you have qualitatively or quantitatively made a substantial investment to obtain, verify or present your database (created by a national of the EEA).  However, the sui generis database protection is limited to a period of 15 years.

Post Brexit the sui generis rights currently recognised will continue to be recognised in the UK, however, the creation of any new databases with not be protected by this right.   You may wish to seek alternative legal protection via amendment of your current licensing agreements.

ACTION REQUIRED – Review current licence agreements.

PATENTS

Patents encompassing the UK are granted by the UK Intellectual Property Office (UKIPO) and the European Patent Office (EPO).  The EPO is subject to the European Patent Convention, not the UK’s membership of the EU.  It will remain possible to file patents at the EPO, designating applicable territories. Therefore, Brexit will have no effect regarding an ‘EU’ patent (application or registration).

The UK government has confirmed that all EU legislation relevant to patents and supplementary protection certificates (where the EU provides an additional period of protection or patents relating to pharmaceutical and agrochemicals) will remain in UK law.

However, it is highly likely that Brexit will impact on the implementation of the proposed (EU) unitary patent and the Unified Patent Court in London.

EXHAUSTION OF INTELLECTUAL PROPERTY RIGHTS – PARALLEL GOODS

Parallel goods are genuine goods manufactured or held under a licence by the rights holder, which are sold by the rights holder. At present, you exhaust your intellectual property rights once your IP protected goods are placed on the market within the EEA.

Post Brexit, UK IP rights holders will not be able to prevent the import of parallel goods from the EEA.  Whereas, EEA IP rights holders will be able to prevent the import of parallel goods from the UK into the EEA. Even though the goods would have been placed on the market in the UK, thus exhausted, post Brexit this will not be considered exhaustion in the EEA.

EU APPLICATION FOR ACTION

EU regulation 608/2013 establishes the rules and procedures allowing EU customs authorities to enforce IP rights at the EU border, via an Application for Action (AFA).   The AFA would allow the applicable customs authorities to seize, and if authorised, destroy counterfeit goods at the EU border.  If you have a national UK right (UK registered trade mark), you would file a national AFA, if you have a union right, for example an EU registered trade mark, you would file a union AFA.  Post Brexit, it will no longer be possible to submit either a national or union AFA to UK customs.  In addition, any previously UK filed AFA’s will no longer be valid within the EU.  For a union AFA to remain valid post Brexit, you would need to refile the AFA in one of the remaining 27 member states.

ACTION REQUIRED – If you currently rely on a Union AFA, you need to refile this in one of the remaining EU 27 member states.

WHAT YOU SHOULD BE DOING RIGHT NOW

• Review the current status of your EU trade mark and design applications;
• Review your licence agreements;
• Review all your current agreements to ensure they are Brexit proof;
• Refile a Union AFA.

WHAT YOU SHOULD BE DOING POST-BREXIT

• Refile your UK trade mark and design applications;
• Ensure you are not breaching any licensing agreements regarding parallel imports.