As we near 31 October 2019 and the prospect of a No Deal Brexit, Ben Evans revisits the subject of intellectual property and the impact a No Deal Brexit will have on your intellectual property rights.
Copyright
The UK is a member of a number of international treaties, and agreements, protecting copyright. These will largely be unaffected by the UK's exit from the EU with the majority of UK copyright works still being protected around the world including in the EU post Brexit and works originating in the EU (but not from the UK) will still be protected in the UK.
Where we will see changes is in respect of certain cross-border copyright mechanisms which will no longer apply in the same way as they were originally intended. For example the existing EU Portability Regulation which allows consumers to access online content services (for example Netflix) when they are travelling will cease to apply and thus UK consumers travelling to the EU may find they can no longer access such services whilst abroad.
Designs
Whilst UK registered and unregistered designs remain unchanged the same cannot be said for Registered Community Designs ("RCD") and Unregistered Community Designs ("UCD").
The owners of RCD's will, upon Brexit, be granted a new equivalent UK right at no cost and "with minimal administrative burden". The RCD itself will continue to protect the owner in the remaining 27 Member States of the EU. The RCD, and resulting equivalent UK right, will thereafter be treated entirely separately for the purposes of renewal, validity etc.
Businesses with pending RCD applications at the point of Brexit will have 9 months, from exit, to file an equivalent UK application based on the RCD and in accordance with the UK's standard fee structure.
UCD's provide businesses with automatic protection for certain designs (including the likes of clothing designs and patterns). Upon Brexit businesses will no longer be afforded UCD's for new designs and, instead, will need to fall back on UK unregistered designs. However, UK unregistered designs are not the same as UCD's accordingly the UK Government have confirmed that where certain types of rights are not permitted to be protected as UK unregistered designs under existing legislation then new schemes will be established to ensure that UCD's are protected in the UK.
Patents
Patents are largely unaffected by Brexit. The European Patent Convention is not related to the EU, European patents will continue to cover the EU and European patent attorneys based in the UK will continue to be able to represent applicants before the EPO.
Trade marks
The most significant impact on IP will be in respect of trade marks. The owners of existing, registered, EUTMs will be granted a new equivalent UK right. It will be an automatic process, but with an opt-out for any rights holders that may not want a UK registration, and will not involve any cost on the part of the rights holder.
The resulting UK registration will, thereafter, be subject to renewal in the UK, can form the basis for proceedings in the UK, can be challenged for invalidity/non-use in the UK and can be assigned and licensed independent from the EUTM from which it originated.
Perhaps the biggest impact will be felt by the holders of EUTM applications that are pending at Brexit. Such applicants will not be automatically granted an equivalent UK application and, instead, will have a period of 9 months to file an equivalent UK application which will benefit from the same filing/priority/seniority date as the EUTM from which it originated. Importantly however the holder will need to pay for this new UK application.
International Registrations ("IR"), designating the EU, will essentially be dealt with in the same way as EUTMs i.e. owners of such IR's will automatically be granted an equivalent UK right or, if they are pending, then there will be a 9 month period within which to file an equivalent UK application.
Enforcement
Currently the owners of EU intellectual property rights (for example EU trade marks, Registered Community Designs and/or copyright) can seek to enforce their rights by bringing proceedings in one Member State but obtain pan-EU relief. So, for example, the owner of an EU trade mark could bring infringement proceedings in a UK court seeking an injunction preventing the defendant from using an infringing mark anywhere in the EU.
Upon Brexit UK courts will no longer have jurisdiction over infringements occurring outside of the UK and thus will not be able to grant relief in respect of infringements outside of the UK. Equally owners of both EU and UK intellectual property rights would need to bring separate proceedings in both the UK and an EU Member State if they seek relief across the EU and in the UK.
Representation
When the UK leaves the EU UK based representatives will no longer be able to directly represent clients before the EUIPO. This means that they will no longer be able to file, or renew, EU trade marks or RCDs. However, Blake Morgan can continue to advise clients in respect of the entirety of their portfolios and have a solution in place whereby we will work with our trusted agents within the EU to deal with the filings and formal representation requirements thus ensuring consistency and continuity for you.
Action
This is a fast-moving issue and there will inevitably be more twists and turns as the subject is discussed at the UK Parliament and with the EU. We will continue to keep you updated but, in the meantime, the following are points to consider to ensure you are prepared:
- If filing new trade mark or design applications now then consider filing both UK and EU applications simultaneously;
- Review where you use your trade marks, if you only use your EUTM in the UK then consider extending use into the other 27 Member States or otherwise surrendering the EUTM and maintaining only the UK mark;
- If you only have a UK mark but use the mark in the other 27 Member States then consider filing an application for an EUTM;
- If you have licences/security interests recorded against an EUTM or RCD then consider whether you should record comparable interests against the UK mark/design;
- Review any co-existence, distribution, licence, or similar, agreements to consider whether those agreements that define the EU as the territory need to be clarified to ensure that they continue to apply to the UK after Brexit; and
- Review any co-existence, settlement, or similar, agreements to ensure that the automatic granting of an UK mark is not going to put you in breach of contract.
