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Brexit and IP – looking ahead in 2018

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IMG_8533Following the UK’s EU referendum and the triggering of the Article 50 notification, the UK is currently scheduled to leave the European Union on 29 March 2019. Until the final arrangements between the UK and the EU are known there is widespread uncertainty in a range of areas including the intellectual property system within the UK.

For example, a particular IP related area of concern is what will happen in respect of EU Trade Marks (EUTMs) and Registered community designs (RCDs) post-Brexit. Without arrangements to the contrary it is unlikely that such EUTMs and RCDs will continue to cover the UK post-Brexit. [However, it is noted that it is completely within the UK’s ability to arrange for the implementation of an equivalent UK trade mark or design right to mirror the EU right. As such, holders of EUTMs and RCDs should expect that, even if arrangements are currently unclear, it is highly likely that the UK will announce the mechanism for continued protection in due course.]

As the UK and the EU move into the next phase of the Brexit negotiations IPcopy thought that this would be a good opportunity to recap how the referendum result impacts the IP world, what the current official announcements are and what action IP right holders can consider taking now.

Impact of Brexit on IP Rights

Unless the UK and the EU negotiate other arrangements, Brexit will have an impact on some EU IP rights. UK national IP rights however will be unaffected.

Patents – the EPO and the European Patent Convention. Brexit will have no impact on the current process for obtaining European patents since membership of the EPC is not tied to the EU. Post-Brexit therefore UK patent protection via the European patent system will be available in the same way as now. The UK’s membership of the PCT system will also be unaffected. Additionally, all UK European Patent Attorneys will continue to be able to apply for and prosecute European patent applications (and will continue to be able to oppose granted EP patents) as they do now.

Patents – the unitary patent system. The unitary patent and Unified Patent Court have not yet entered into force. However, the unitary patent system is currently tied to EU membership and so Brexit will impact on the UK’s participation in this system unless the relevant agreements are renegotiated.

Trade Marks (EUTMs)/Registered Community Designs (RCDs). After Brexit, without any agreements to the contrary, existing EUTMs/RCDs will no longer cover the UK and EUTM/RCD registrations filed after Brexit will only cover the EU27.

Community unregistered design right (CUDR). The CUDR is an important right for British designers wanting to enforce their rights across Europe without the need for, and cost of, applying for RCDs. Although the UK has its own unregistered design right this does not provide the same level of protection (e.g. surface decoration is not covered in the UK domestic variety of unregistered design protection). It is currently uncertain whether UK originating designs will qualify for CUDR protection post-Brexit which would have a potentially huge impact upon the multi-billion UK design industry.

Exhaustion of rights. Under European Law, goods already put on the market in the European Economic Area (EEA) by or with permission of an IP rights holder may be dealt with freely within the EEA without infringing those IP rights. However, this exhaustion principle does not currently apply to goods first put on sale outside the EEA. Brexit will impact the exhaustion rules that currently apply to the UK.

Brexit will also impact supplementary protection certificates, the protection of databases and geographical indicators. For more details on the above see our earlier post here.

Official announcements

UK – The UK has not currently issued a position paper on Intellectual Property Rights in the context of Brexit. However, the UK Intellectual Property Office has a dedicated Brexit page on its website. This page highlights the most up-to-date information from the UKIPO on the subject of Brexit but was last updated in November 2017.

The UKIPO is currently engaging with stakeholders and right holders on issues such as the impact of Brexit on Registered Community Designs and EU trade marks. Rights of representation and the impact of Brexit on unregistered protection for designs are also being assessed. The UK is keen to hear views on these issues and comments emailed to EUenquiries@ipo.gov.uk will be taken onboard.

EU – The European Commission has released two communications regarding Brexit and IP. In September 2017 the Commission released a position paper on IP (see IPcopy posts here and here) and in December 2017 they also issued a notice dealing with the potential position where the UK and the EU27 are unable to come to an agreement in the Brexit negotiations (see IPcopy post here).

Legal industry position

A briefing note from a number of UK organisations (Law Society of England and Wales, Intellectual Property Bar Association, Chartered Institute of Patent Attorneys, Chartered Institute of Trade Mark Attorneys and the IP Federation) representing various parts of the UK IP professions was released early January 2018. The note sets out the common requests of these organisations to the UK Government, namely:

  • The UK Government should seek to negotiate to continue to participate in pan-European rights, such as the EU trade mark and registered community design systems and if that is not possible to legislate for the automatic continuation of EU rights in the UK;
  • The UK should confirm its intention to stay in the unitary patent system;
  • The UK position on exhaustion of right should be publicised;
  • The continued rights of representation of UK IP professionals should be treated as a priority;
  • Arrangements for the mutual recognition of judgments should be negotiated.

IPcopy Brexit action list

Although there is much uncertainty around the impact of Brexit on IP in the UK there are some actions that IP right holders can take, namely:

  • Monitor communications from your IP representatives and the UKIPO relating to Brexit;
  • For trade marks, assess your current marks with your IP representative to decide whether any further UK or EUTMs are warranted. Additional filings may be justified to be certain of continued protection or to maintain EU marks in the light of use plans. For new marks assess whether parallel UK and EUTMs should be filed to be certain of protection in the UK and the EU27.
  • For designs, similarly to the position with trade marks, assess with your IP representative whether additional UK or RCDs are needed. Additionally, assess whether you have any designs that are not currently registered that are still in the 12 month grace period.
  • Review IP agreements to ensure that territorial scope as it applies to the UK and EU is clear.

Mark Richardson 9 January 2017

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