The UK is shortly expected to leave the European Union, which may have an effect on your Intellectual Property Rights. This article is designed to briefly set out those potential changes.
There is a key ‘switch-over’ date for IP, which is referred to here as “Exit Day”. The exact date of Exit Day will be different depending on the manner in which the UK leaves the EU.
In the event of a “No Deal” Brexit, where a Withdrawal Agreement has not been agreed by both sides, the UK will leave the EU without any transition period and Exit Day will be the end of the Article 50 period. Currently the end of the Article 50 period is 12 April 2019, though this date could potentially be extended again if there is still no agreement by that date.
If the Withdrawal Agreement is agreed by the EU and ratified by the UK, this provides for a transition period during which the UK will no longer be part of the EU, but will still be bound by EU rules. In this scenario ‘Exit Day’ is the end of this transition period (the end of December 2020 at least though potentially this date could also be extended).
References to “Exit Day” below should therefore be read as encompassing either the “No Deal” exit day or the exit date at the end of the transition period.
• European patents are granted under the European Patent Convention (EPC). Brexit will have no impact on European patents because the EPC is not an EU treaty.
• Membership of the EPC does not require a country to be an EU state and, in fact, a number of non-EU countries such as Switzerland and Norway are already part of the EPC. Post-Brexit, the UK will remain a member of the EPC.
• The PCT system and UK national patents (either filed directly at the UK Intellectual Property Office or as regional patent applications from the EPC) are also unaffected by Brexit.
• European Patent Attorneys based in the UK will still be able to represent all applicants at the EPO after Exit Day.
• The Unitary patent system is likely to be delayed because of Brexit and also because of a legal challenge in Germany. Post Brexit the UK government has indicated it wants to explore the possibility of continuing to take part in the system.
• After Exit Day, European Union Trade Marks (EUTMs) will no longer provide trade mark protection in the UK.
• Registered EUTMs will be cloned on to the UK Register at no cost to the right holders. These cloned marks will be given the same rights as existing UK trade mark registrations and all existing dates, such as filing dates, priority dates and seniority dates, will be maintained.
• EUTM designations of International Registrations will also be cloned on to the UK Register. However, these rights will be national UK rights and not as a UK designation of the International Registration.
• Pending EUTMs and EUTM designations of International Registrations will not be cloned on to the UK Register but there is an option to re-file in the UK and retain the same filing date. These applications will incur the usual costs set out in the UK IPO’s application fee structure and undergo examination by the UK IPO in line with standard procedures.
• Use of an EU trade mark in the UK only prior to Exit Day will be relevant for a period of time after Exit Day but the significance of this may gradually reduce over time. Therefore we recommend discussing use requirements with your representative to ensure EUTM registrations can be maintained if challenged.
• Use of a trade mark in the EU, but not including the UK, will be sufficient to maintain a newly cloned UK right for a period of five years after Exit Day. After this date, the mark must be put to use in the UK in order to maintain registration.
• After Exit Day it will be necessary to obtain separate UK and EU Trade Marks in order to get protection across the territory that is currently covered by a single EUTM.
• After Exit Day, Registered Community Designs (RCDs) will no longer provide design protection in the UK. This means that when filing an RCD after Exit Day it will be necessary to obtain separate UK and EU registered designs in order to get protection across the territory that is currently covered by a single RCD.
• On Exit Day, Registered RCDs will be cloned on to the UK Register at no cost to the right holders. These cloned marks will be given the same rights as existing UK design registrations and all existing dates, such as filing dates and priority dates, will be maintained.
• Pending RCDs (including those subject to deferred publication) will not be cloned on to the UK Register but there will be an option to re-file these rights in the UK and retain UK protection with the same filing date. These applications will incur the usual costs set out in the UK IPO’s application fee structure and undergo examination by the UK IPO in line with standard procedures.
• Brexit will also impact unregistered Community design rights (UCDs). All UCDs existing prior to exit day will automatically be given a similar effect in the UK for the remaining period of protection of the right.
• Where a UCD comes into existence after Exit Day, the UCD will no longer cover the UK. There is a UK unregistered design right; however, there are some design aspects, such as colour and ornamentation, that would be covered by a UCD but not by the existing UK unregistered design right. The UK government will introduce a new UK unregistered design right called a ‘supplementary design right’ to cover these aspects, However, the country of first disclosure is important to the existence of these rights, so if unregistered design rights are important to you, you should consult your legal practitioner for further advice.
Brexit does not impact on Keltie’s ability to continue to represent clients in the EU due to our Irish office, which remains in the EU, meaning we continue to be able to act before the EU IPO.
Charlotte Wilding, Emily Weal, Mark Richardson 27 March 2019
“The UK government will introduce a new UK unregistered design right called a ‘supplementary design right’ to cover these aspects.”
Is that provision with effect from Exit Day or is it an aspiration? i.e. there could there be some designs which “fall through the cracks” and benefit from neither CDPA design right nor EU-type unregistered design rights?
There is now some draft legislation for the supplementary unregistered design right, which confirms that this will take effect from Exit Day – see here if you are interested! http://www.legislation.gov.uk/ukdsi/2019/9780111180037/schedule/1
This is part of the same legislation that will provide the cloning and re-registration of EU rights in the UK.
On that basis it looks as though designs will always be entitled to at least one of the Community unregistered design right, or the UK supplementary design right.
However, designs may not necessarily be entitled to both because of the territorial disclosure requirements, and this is where I think something might fall through the cracks.
For Community Unregistered Design, the first disclosure must be in the Community; after Exit Day that will not include the UK. Meanwhile, the UK supplementary right will require first disclosure in the UK ‘or another qualifying country’; by the same draft legislation, after exit day EEA countries will no longer be qualifying countries.
So on the face of it, after exit day, if you disclose first in the EU, you will not be entitled to the UK supplementary right, but if you disclose first in the UK, you will not be entitled to the Community Unregistered Design Right. Simultaneous disclosure in the EU and UK may be the answer to get both rights, but we might have to wait for some case law to establish itself before we know if this will really work.
Hope that helps!