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 and a Protocol on Ireland/Northern Ireland aimed at avoiding a hard border on the island of Ireland.  From 1 January 2021, following the end of the transition period provided for in the Withdrawal Agreement, the UK is outside 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.

Trade Marks and Designs

Registered trade marks and registered designs are the most harmonised forms of IP rights in the EU, which means they are most affected by Brexit.  The UK remained part of the EU trade mark system throughout the transition period which ended on  31 December 2020. After the end of the transition period, existing EUTMs and RCDs  no longer cover or have protection in the UK.  

From 1 January 2021, the UKIPO began creating a comparable UK trade mark for all right holders with an existing EU trade mark. Similarly, all registered and published RCDs have comparable UK designs recorded on the UK register. These will be treated as if they had been applied for and registered under UK law.  Irish businesses, organisations or individuals with an existing EUTM or RCD will therefore have a new UK equivalent right granted that will come into force on 1 January 2021. 

The new UK trade marks and designs retain the registration and application dates recorded against the corresponding EUTMs and RCDs and will be treated as if they 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 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.

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 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:

EU trade mark protection and comparable UK trade marks - GOV.UK (www.gov.uk)

Changes to EU and international designs and trade mark protection - GOV.UK (www.gov.uk)

Changes to unregistered designs - GOV.UK (www.gov.uk)

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 (31 December 2020) continue to enjoy protection in the UK. The UK has indicated 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 will 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. 

Any new SPC applications filed in the UK from 1 January 2021 must have a valid UK authorisation.  Marketing Authorisations from the European Medicines Agency will be converted into equivalent UK authorisations on 1 January 2021. Guidance on the conversion process is available from the UK Medicines and Healthcare products Regulatory Agency (MHRA).   There are 3 types of marketing authorisation that can be cited in a UK SPC application filed after 1 January: 

(i) A “UK marketing authorisation” granted by the MHRA and valid in Great Britain and Northern Ireland.

(ii) A “GB authorisation” granted by the MHRA that is valid in England, Scotland and Wales only.

(iii) A “new EU authorisation” that is valid in Northern Ireland only granted as part of the EMA’s centralised procedure.

Under the Northern Ireland Protocol to the Withdrawal Agreement, Northern Ireland remains aligned to the EU post-Brexit, which means that ALL new EU marketing authorisations granted after 1 January 2021 will be valid in Northern Ireland. 

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, from 1 January 2021, 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.

From 1 January 2021, persons established in the UK and qualified under UK law to act as a trade mark agent in the UK, and who have previously 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 and trade mark attorneys 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

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.  EU cross-border copyright mechanisms contained in a number of copyright directives and regulations extend only to member states of the EU or EEA. Therefore, as of 1 January 2021, 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.  However, the Withdrawal Agreement does contain 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.  Only UK citizens, residents, and businesses are eligible for database rights in the UK for databases created on or after 1 January 2021. 

Amendments to copyright legislation in the UK have been enacted in The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (legislation.gov.uk)and 2020.  The Regulations make amendments to UK legislation in the field of copyright and related rights and, in particular, amend the UK Copyright, Designs and Patents Act 1988, subordinate legislation and retained direct EU legislation.  The UKIPO has also published the following guidance:

Copyright clearance for UK satellite broadcasting - GOV.UK (www.gov.uk)

Cross-border portability of online content services - GOV.UK (www.gov.uk)

Collective rights management in the EU - GOV.UK (www.gov.uk)

The UK has also indicated that it will not implement the Directive on Copyright in the Digital Single Market and any future changes to the UK copyright system will be considered as part of the usual domestic policy process. 

More information is contained in the notices to stakeholders Consequences of Brexit | European Commission (europa.eu)published by the EU which set out the consequences of the UK withdrawal in the field of copyright and related rights.

Enforcement

All commercial arrangements such as licenses and co-existence agreements involving the UK should be reviewed if this has not already been done.  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.

Injunctions which prohibit the infringement of an existing EUTM or RCD in the UK that are in place as of 1 January 2021 will be enforceable against the 'comparable' UK trade mark or design. However, in the case of a pending EUTM or RCD infringement action where judgment has not been obtained before 31 December 2020, if that action is in the UK, the UK Court will not be able to grant pan-EU relief and any injunction granted will be limited to the UK. If the legal action is in another EU territory, any pan-EU injunction will exclude the UK.

Decisions of the Court of Justice of the EU (CJEU) in IP matters issued after 31 December 2020 are no longer binding on the UK courts. 

BREXIT Guides for Business

To support businesses, 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. For more on what Brexit may mean for your business and your daily life see gov.ie - Brexit. Are you ready? (www.gov.ie)

The Department of Enterprise, Trade and Employment provides a range of supports to help businesses of all sizes navigate Brexit changes, examine their Brexit exposure, seek advice, avail of customs training, and make plans to protect their business.

    Latest EU Stakeholder Notices and Guidance on IP related issues.

    To assist stakeholders, the European Commission is reviewing – and where necessary updating – the over 100 sector-specific stakeholder preparedness notices it published during the Article 50 negotiations with the United Kingdom (these versions are available at Preparedness notices | European Commission (europa.eu)) and 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)

    Updated 1 March 2021

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