Now that the UK has formally left the EU, the IPO has helpfully published a document setting out high-level details on the impact of the Withdrawal Agreement on Intellectual Property Rights during and after the Brexit transition phase. This article sets out some of the key points to note when it comes to the treatment of IPRs in this respect. The focus is on EU trademarks and community design rights, as they will undergo the most significant changes post-completion day. No big changes (save for some niche exceptions) are envisaged when it comes to copyright, which is largely harmonised via international treaties and therefore not affected. The same is true of patents; since the European Patent Office is not an EU institution, leaving the EU does not affect the current European patent system.
During the transition period
It’s worth bearing in mind that EU law will continue to apply in the UK during the transition period. The status of IPRs during this period is largely unaffected since the Withdrawal Agreement provides for continued protection in the UK for international trademarks and designs designating the EU during this phase.
After the transition period
Registered EU rights at closing day
After the transition period, everything will change. EU trademarks, unregistered/registered community design rights and international design and trademark registrations designating the EU will no longer provide protection in the UK. However, the Withdrawal Agreement ensures continued protection of these existing IPRs in the UK after the end of the transition period by automatically granting owners of these rights comparable UK rights. The rights will effectively be cloned and converted into equivalent UK rights at no extra cost. (There will be an opt-out system for owners who do not want these equivalent UK rights.) This means that the Intellectual Property Office will be busy! According to statistics recently published by the IPO, they will have the task of converting nearly 1.4 million EU trade marks and 700 thousand EU designs to UK rights, to take effect on 1 January 2021. So the upshot of this is, if you already have an EU right at the end of the transition period, it will continue to apply in the UK automatically by virtue of the cloned right. EU mark owners who are granted comparable UK rights should also take care to ensure they put their new UK rights to genuine use post the transition period. This is because trademarks can be vulnerable to revocation if they are not used in the territory in which they are protected. Those marks will not be able to benefit from any reputation acquired by the comparable EU mark before the transition period.
Not yet registered EU rights at closing day (pending or unregistered rights)
Those who hold pending EU trademark applications and registered community design applications at the end of the transition period will have a 9-month grace period to apply to register the equivalent UK mark or design. By doing this, the holder will also retain the earlier filing date of the pending application. Key takeaway: For those who don’t have an EU-wide trademark or design protection but are thinking about securing this, steps should be taken as soon as possible as there is a significant financial incentive in registering these before the end of this year. This is because only EU trademarks and community designs registered before the end of the transition period will continue to protect the UK (and bear in mind that EU applications take at least 6 months from application to registration). New EU applications (or pending applications) will only cover the remaining EU Member States, not the UK.
Exhaustion of rights
Exhaustion of rights (where owners of IP-protected goods who consented to them being placed on the market can’t prevent parallel imports within the EEA) is also worth a quick mention. IP rights exhausted in the EU and the UK before the end of the transition period shall remain exhausted in both areas. It is, however, still unclear how resale of goods will be handled after completion day and whether parallel imports from other countries will be permitted or not. Much will depend on whether the exhaustion principle will be decided to apply internationally, in the EEA and UK, or only in the UK.
It also remains to be seen how the courts will decide intellectual property cases post-completion day, as the UK courts will no longer be bound by EU court decisions as they have been for the previous 50 years or so. We may therefore slowly see a more gradual and fundamental departure from some of the well-established interpretations and judicial reasoning applied by the EU courts. Interestingly, the government has also indicated that it does not intend to implement the highly controversial Digital Copyright Directive into UK law. For more about this and what it would have meant for rightsholders, tech platforms and others, see here. As you’ve probably gathered (if you’ve got this far!), these post-transition IP arrangements are somewhat complex and the information set out above really only scratches the surface. Further advice should be sought from our LawBriefs for specific guidance and real-life application.
To speak to the author of this article, Laura Symons, or for expert intellectual property advice please do enter an enquiry or call us today on: 020 38088314 and speak to a member of our friendly Client Care Team. Laura Symons is an English qualified solicitor with experience working in both private practice and in-house. She has advised a wide range of businesses, with a particular focus on start-ups and the media and entertainment sector. Her work involved advising clients on a broad spectrum of commercial matters, as well as brand protection issues such as copyright, infringement disputes and trademark registration and opposition.
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