The Impact of BREXIT on Intellectual Property

The United Kingdom left the European Union on 31 January 2020 on the basis of a Withdrawal Agreement which includes an agreed transition period until at least 31 December 2020.  On 2 March, the EU and the UK began negotiations on a new future relationship agreement which, if agreed, is due to come into effect from 1 January 2021.   During the transition period, EU rules and regulations including those related to Intellectual Property (IP) will continue to apply to the UK and the UK will remain part of the EU's Single Market and Customs Union.

The following is a summary of relevant information on various IP issues arising from Brexit including protection and enforcement of IPRs.

Some of the IP issues mentioned may be included in the negotiations on the future partnership between the EU and the UK and, where this is the case, the information will be updated once agreement has been reached.

Trade Marks and Designs

Registered trade marks and registered designs are the most harmonised forms of IP rights in the EU, which means they will be the most affected by Brexit.  The UK will remain part of the EU trade mark system throughout the transition period that ends on 31 December 2020. EU Trade Marks (EUTM) and Registered Community Designs (RCD) will continue to extend to the UK during this period.  After the end of the transitional period, existing EUTMs and RCDs will no longer cover or have protection in the UK.  

The UK will not create comparable UK trade mark and registered design rights until the end of the transition period under the terms of the Withdrawal Agreement.

Irish businesses, organisations or individuals with an existing EUTM or RCD will have a new UK equivalent right granted that will come into force at the point of the UK’s exit from the EU. The new UK right will be provided with minimal administrative burden. The trade mark or design will then be treated as if it had been applied for and registered under UK law. This means that these trade marks and designs:

·         will be subject to renewal in the UK;

·         can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal;

·         can be assigned and licensed independently from the EU right.

Irish businesses, organisations or individuals that have pending applications for an EUTM or RCD at the end of the transition period and the UK’s exit from the EU will have a period of nine months from 31 December 2020 to apply in the UK for the same protections, retaining the date of the EU application for priority purposes.  This means that for a period of nine months from 31 December 2020, the UK government will recognise filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application. Applicants re-filing under the same terms for a UK equivalent right, will be required to use the normal application process for registered trade marks and registered designs in the UK and will need to meet the cost of refiling the application in accordance with the UK application fee structure.

The foregoing is a summary and considerably more detail on the post Brexit arrangements for trade marks and designs has been provided by UKIPO on its website at the following link:
www.gov.uk/government/news/intellectual-property-and-the-transition-period

Key points to note in regard to trade marks:

From the 1 January 2021, EUTMs will no longer protect trade marks in the UK. Under the Withdrawal Agreement Act, on the 1 January 2021, the UKIPO will create a comparable UK trade mark for all right holders with an existing EUTM.

·         Where a comparable UK trade mark is created, it will have the same legal status, filing and priority dates as if it had been applied for and registered under UK law.

·         It will be capable of being challenged, assigned, licensed or renewed separately from the original EUTM.

·         The original EUTM will remain in force in all remaining EU member states.

·         Pending EUTM applicants will have the option to apply to register a comparable UK trade mark in the 9 months after 1 January 2021 and to keep the earlier filing date of the pending EUTM.

The UKIPO has provided more details regarding changes to its trade mark law, registration numbering, opting out and renewals at: www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks

Key points to note in regard to designs:

·         From the 1 January 2021, registered Community designs (RCDs), and unregistered Community designs (UCDs), will no longer be valid in the UK. Under the Withdrawal Agreement Act, on the 1 January 2021, the UKIPO will create a comparable UK design right for all right holders with an existing RCD.

·         Where an equivalent UK design right is created, it will be afforded the same legal status, filing and priority dates as if it had been applied for and registered under UK law.

·       It will be capable of being challenged, assigned, licensed or renewed separately from the original RCD.

·       The original RCD will remain in force in all remaining EU member states

·         Pending RCD applicants will have the option to apply to register a UK design in the 9 months after 1 January 2021 and to keep the earlier filing date of the pending RCD.

Unregistered Designs

·         Designs that are protected in the UK as an unregistered Community design before    1 January 2021 day will be protected as a UK continuing unregistered design and will be automatically established as such on 1 January 2021.

·         It will continue to be protected in the UK for the remainder of the 3 year term attached to it.

·         The fact that a corresponding unregistered Community design was established before 1 January 2021 through first disclosure in the EU but outside of the UK will not affect the validity of the continuing unregistered design.

The UKIPO has provided more details regarding changes to its trade mark and design law, registration numbering, opting out and renewals at:

www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks

www.gov.uk/guidance/changes-to-eu-and-international-designs-and-trade-mark-protection-after-the-transition-period

www.gov.uk/guidance/changes-to-unregistered-designs-after-the-transition-period

International registrations

In accordance with the terms of the Withdrawal Agreement, international registrations for trade marks and designs protected via the Madrid Protocol and the Hague Agreement designating the EU and protected in the EU before expiration of the transition period continue to enjoy protection in the UK. The UK has indicated that it will take measures to ensure that holders of international registrations under the Madrid and Hague Systems that have obtained protection for their marks in the European Union before the end of the transition period continue to enjoy protection for those marks in the United Kingdom after this period has ended.

www.wipo.int/edocs/madrdocs/en/2020/madrid_2020_2.pdf

www.wipo.int/edocs/hagdocs/en/2020/hague_2020_2.pdf

www.wipo.int/edocs/madrdocs/en/2020/madrid_2020_54.pdf

Patents and Supplementary Protection Certificates (SPCs)

The UK has indicated that relevant EU legislation on supplementary protection certificates will be retained in UK law. The Withdrawal Agreement ensures that SPC applications which are pending at the end of the transition period will be examined under the current framework. Any SPC which is granted based on those applications will provide the same protection as existing SPCs.  A new UK SPC law mirroring the existing EU SPC regime, along with the existing supporting provisions in UK patents legislation, will form the UK’s own supplementary protection certificate regime on exit.    This approach aims at ensuring that UK law continues to operate in respect of biotechnology patents and applications, compulsory licensing arrangements, and exceptions from infringement for the testing of pharmaceutical products.

The UK’s leaving the EU does not affect the current European patent system because the system is based on the European Patent Convention which is an international treaty rather than EU law.  Existing European patents covering the UK remain unaffected.

The UK government has confirmed that, post-Brexit, the UK will not be part of the Unified Patent Court (UPC) or Unitary Patent (UP) system.

UK Trade Mark Attorneys on the Irish Register.

Section 86(1)(a) and (b) of the Trade Marks Act 1996 (as amended) inter alia entitles any person who resides in the State or an EEA state or has a place of business in the State or in an EEA State to be eligible to be a registered trade mark agent.  However, at the end of the transition period from 1 January 2021, when the UK leaves the EU, persons who do not meet the requirements of Section 86(1) (a) and (b), may cease to be eligible to be registered.

UK based Trade Mark Attorneys providing patent agent services in Ireland on a cross border basis.

At the end of the transition period from 1 January 2021, when the UK leaves the EU, persons established in the UK and qualified under UK law to act as a trade mark agent in the UK, and who have notified the Controller in accordance with the Services Directive and Section 85(4A) of the Trade Marks Act 1996 (as amended) of their intention to carry on the business of a trade mark agent for others in connection with a trade mark, or any procedure relating to a trade mark or the obtaining thereof, will no longer be able to carry out such business on a cross border basis.

The Withdrawal Agreement also ensures that UK based legal representatives can continue to represent their clients before the EUIPO in cases that are ongoing at the end of the transition period.

UK Patent Attorneys on the Irish Register.

Section 107(1) of the Patents Act 1992 (as amended) inter alia, entitles any person who resides in the State or an EEA state or has a place of business in the State or in an EEA State to be eligible to be a registered patent agent. However, at the end of the transition period when the UK leaves the EU, persons who do not meet the requirements of Section 107(1) (a) and (b), may cease to be eligible to be registered. 

UK based Patent Attorneys providing patent agent services in Ireland on a cross border basis.

When the UK leaves the EU at the end of the transition period, persons established in the UK and qualified under UK law to act as a patent agent in the UK, and who have notified the Controller in accordance with the Services Directive and Section 106 (3A) of the Patents Act 1992 (as amended) of their intention to carry on the business of a patent agent for others in connection with a patent, or any procedure relating to a patent or the obtaining thereof, will no longer be able to carry out such business on a cross border basis.

Exhaustion of Rights

Currently, exhaustion of rights occurs in the UK when IP-protected goods are put on the market by or with the permission of the owner of the IP right anywhere in the EEA (which includes all EU countries and also Iceland, Liechtenstein and Norway). Equally, when an IP right owner (such as the owner of a trade mark) puts goods on the market in the UK, exhaustion of rights occurs throughout the EEA.  Exhaustion of rights means that the IP right holder cannot then prevent the movement of those goods anywhere within the EEA.  Such goods are known as parallel goods, (i.e. they are genuine goods and not counterfeit). In the Withdrawal Agreement, the EU and UK have agreed that IP rights exhausted in the EU and the UK before the end of the transition period shall remain exhausted in both areas. However, the position after the end of the transition period remains unclear.

Cross Boarder Copyright after BREXIT

EU cross-border copyright mechanisms extend only to member states of the EU or EEA.    They include:

·         Sui generis database rights under the Database Directive.

·         Portability of online content service under the Portability Regulation.

·         Country-of-origin principle for copyright clearance in satellite broadcasting under the Satellite and Cable Directive.

·         Orphan works (works without documented owners) copyright exception under the Orphan Works Directive.

·         Collective management of copyright licensing bodies under the Collective Rights Management (CRM) Directive.

·         Cross-border transfer of accessible format copies of copyright works under the Marrakesh Directive.

In general, the reciprocal protection for copyright works which is enjoyed by both the UK and the EU is assured by several international treaties on copyright which apply to both.  Current cross-border copyright arrangements which are unique to EU member states (such as cross-border portability of online content services and reciprocal protection for databases) will continue to apply to the UK until the end of the transition period. The Withdrawal Agreement contains an assurance that any database rights that exist in the EU and UK at the end of the transition period will continue to be recognised in both territories for the remainder of their term.  At the end of the transition period and unless otherwise agreed as part of the trade negotiations, the UK will be treated by the EU and EEA as a third country and the reciprocal element of these mechanisms will cease to apply to the UK. 

The UK has also indicated that it will not implement the Copyright Directive before leaving the EU and that any future changes to the UK copyright system will be considered as part of the usual domestic policy process.  However, it may be that the trade agreement currently being negotiated by the UK and EU may result in a largely harmonised copyright protection regime, in which case future differences between UK and EU copyright law may be limited.

Enforcement

By virtue of the transition period in the Withdrawal Agreement, EU law will continue to apply in and in relation to the UK only until the 31st December 2020. Before the end of the transition period, licenses and co-existence agreements should be reviewed.  Where there is no specific mention of the UK but one of the territories listed is “the EU” consideration should be given to amending the agreement or license, - particularly where the UK is a significant market.  After the end of the transition period, should the need arise to legally enforce their rights, proprietors will need to bring two sets of proceedings (one before a UK Court and the other before an EU Court) and increased litigation costs will be unavoidable. 

The UK government has confirmed that any pan-EU injunction issued by the court of a member state before the end of the transition period will be recognised by the UK.  As yet, there has been no indication from the EU that a pan-EU injunction granted by a UK court before Brexit will be recognised and enforced by the courts of EU member states after Brexit.

It should also be noted that from the end of the transition period, decisions of the Court of Justice of the EU (CJEU) in IP matters will no longer be binding on the UK courts.  Consequently, over time the case law of the UK and the EU may begin to diverge in some respects. 

BREXIT Guides for Business

To support businesses as they prepare for Brexit, the Government, together with industry bodies and business groups, has developed a range of Brexit programmes and advisory supports which are tailored to business sectors. The information is contained in the digital booklet Getting Your Business Brexit Ready – Practical Steps.

The Department of Enterprise, Trade  and Employment has produced a Quick Brexit Guide for Business booklet to help businesses navigate the challenges posed by Brexit. 

There are also many supports available through the LEOs, Enterprise Ireland, InterTradeIreland and Skillnet Ireland, to help businesses examine their Brexit exposure, seek advice, avail of customs training and make plans to protect their business.


More information regarding supports to get your business Brexit Ready can be accessed at:
Brexit - DETE (enterprise.gov.ie)

Latest EU Stakeholder Notices and Guidance on IP related issues.

Since 1 February 2020, the UK has withdrawn from the EU. The ‘withdrawal agreement’ provides for a transition period ending on 31 December 2020.  It can be expected that as of 1 January 2021 there will be broad and far-reaching consequences, regardless of the outcome of ongoing Brexit negotiations.

To assist stakeholders, the European Commission has updated and issued several new readiness notices to stakeholders on IP issues, which can be found below.

Withdrawal of the United Kingdom & EU Rules in the field of European Union Trade Marks and Community Designs (REV2, Brussels, 18 June 2020)

Withdrawal of the United Kingdom & EU Rules in the field of Geographical Indications (Brussels, 6 July 2020)

Withdrawal of the United Kingdom & EU Rules in the field of Exhaustion of Intellectual Property Rights (Brussels, 25 June 2020)

Withdrawal of the United Kingdom & EU Rules in the field of Copyright and Related Rights (Brussels, 23 June 2020)

Withdrawal of the United Kingdom & EU Rules in the field of Customs Enforcement of Intellectual Property Rights (Brussels, 17 August 2020)

Withdrawal of the United Kingdom & EU Rules in the field of Supplementary Protection Certificates for Medicinal Products and Plant Protection Products (Brussels, 15 June 2020)

UKIPO Information on trade marks, designs, patents, copyright, and exhaustion of IP rights during the transition period.

www.gov.uk/government/news/intellectual-property-and-the-transition-period

19th August 2020