Intellectual property (IP) rights will continue unaffected by the UK’s vote to leave the EU until the exit process is complete, which is likely to take several years. Although the consequences of Brexit will largely depend on the exit terms agreed, there are steps that IP owners can take now to prepare their IP portfolios for Brexit in whatever form that may be.
EU Trade Marks or EUTMs (previously known as Community Trade Marks or CTMs) were established by EU law to provide trade mark protection in all the member states of the EU. After Brexit EUTMs will cease to be valid in the UK but will continue to be valid within the remaining member states of the EU. In order that EUTMs filed before the UK’s exit remain protected in the UK, one of the following solutions will be needed:
- Conversion of rights to UK: It is possible that the UK will enact law that provides for a EUTM filed prior to the UK’s exit to be ‘converted’ into a national UK right that keeps its original application date. EUTMs would be split between the EU and the UK. EUTM owners would end up with two registrations, one in the EU and one in the UK. Details of any proposed conversion process would be determined as part of the exit negotiation process. Charges may apply.
- New UK application: It is possible that EUTM owners will need to submit a new application for UK protection. This will have its own complications that the UK Government will need to consider:
- How long EUTM owners would have to apply for a new trade mark and whether they could claim priority from the filing date of the EUTM.
- Under current law it would not be possible to apply for a UK registered design, as the requirement for novelty would not be met.
- UK rights will not enable the owner to oppose third party applications for similar EUTMs/RCDs.
- UK businesses with EUTMs may find their EUTMs are vulnerable if the business does not use the mark within any of the remaining EU member states.
- UK businesses which do not have a commercial or industrial establishment (eg an office or factory) in an EU country will need to appoint an EU representative to communicate on their behalf with the EUIPO regarding their EUTMs and RCDs.
- The UK remains in the EU TM system: in this scenario (which is much less likely) the system would not change and the UK would stay within the EUTM, even though it would no longer be part of the EU.
Businesses can continue to apply for new EUTMs until the UK leaves the EU. This would be appropriate for businesses that intend to use the mark in the other 27 member states. If the business only intends to use the mark in the UK, a UK national registration would be more appropriate, and would avoid the need to convert it later. It is likely that a conversion process will be agreed as outlined in 1(b) above. It would be advisable to ensure use of the EUTM in both the UK and another EU country, to avoid possible claims of non-use in future.
The UK will remain a member of the World Intellectual Property Organization (WIPO) which handles international trade mark registrations. WIPO is a United Nations agency and the UK’s WIPO membership will be unaffected by Brexit. Consequently, filing an application through WIPO may be the most appropriate option if your business will use its mark in the UK and/or EU and further afield in countries such as Japan, China and the USA.
After Brexit, Registered Community Designs (RCDs), like EUTMs will no longer provide protection in the UK. It seems likely that, as discussed for EUTMs above, the UK will enact law to allow for the conversion of the UK part of the RCD into a national UK right. It is also possible, although less likely, that the UK would remain within the RCD system, even though it would no longer be part of the EU.
Businesses can continue to apply for new RCDs until the UK leaves the EU, although if the business only intends to use the mark in the UK, a UK national registration would be more appropriate, and would avoid the need to convert it later. For new designs requiring protection across Europe, businesses should seek registration in both the UK and the EU at the same time.
Unregistered Community designs will cease to have effect in the UK when the UK exits but will still have effect in the remaining EU countries. The effect of Brexit on designs will depend on the nature of your business. The fashion industry has enjoyed the wider rights afforded to it by unregistered Community designs law, which protects surface decoration. UK unregistered design law does not protect surface decoration. Industries such as product design may prefer to rely on UK unregistered design rights, as the protection for shape-only designs is broader.
Once the UK has left the EU, the only way to obtain an unregistered Community design will be to make the design public in the EU first. A design which has firstbeen made public outside the EU will not enjoy protection as an unregistered Community design. For this reason it is recommended that UK designers and manufacturers who want to continue to enjoy unregistered Community design protection should market their product on the European mainland first and then in the UK. The alternative is to apply for an EU RCD of the unregistered design within one year of first disclosure of the design anywhere in the world.
The existing system for the granting and enforcement of European patents will remain the same as the system established by the European Patent Convention which sits outside the remit of the EU and EEA.
Under the existing European Patent System, patentees file at the European Patent Office (EPO) and obtain a bundle of national patents requiring validation in each member state. The proposed Unitary Patent (UP) and its associated Unified Patent Court (UPC) will provide a means of validating a granted European patent to obtain uniform patent protection in all 25 participating EU member states by filing a single application and paying a single fee. It is unlikely that the UK will be able to continue to participate in the UP or UPC after Brexit, and this fact in itself is likely to delay, and possibly defeat the whole project. If it does proceed, UK businesses will still have the option to make use of the UP system if they wish to extend protection to the remaining block of participating EU countries but if protection is needed in the UK, it will be necessary to apply separately in the UK or via the European Patent Convention, as at present.
The specialist section of the Unified Patent Court for chemicals and life sciences, which was due to be based in London, will have to be moved elsewhere if the UK no longer participates.
Supplementary Protection Certificates (SPCs) provide extended patent protection for the active ingredient in medicinal products and plant protection products. SPCs are conferred by an EU Regulation and only apply to patents in EU member states. SPC protection must be applied for in each member state where a European patent is validated. Unless the UK puts in place new legislation mirroring the SPC Regulation, UK patent holders will no longer be able to apply for SPCs after Brexit and existing SPCs will lapse.
National copyright law will not be affected by Brexit. There may be some divergence in the law over time due to different interpretations of the law by UK and EU courts. Since there is widespread international agreement on many aspects of copyright law, the UK is unlikely to diverge greatly.
The law in the UK is already largely compliant with the minimum standards set by the Trade Secrets Directive 2016/943/EC (which all EU member states will need to comply with by 9 June 2018) and therefore Brexit should have no impact on UK law related to trade secrets.
Most domain names will be unaffected by Brexit. However .eu domain names may only be registered by businesses established or individuals living in the EEA. If the UK does not remain a member of the EEA, businesses will need to decide whether existing registrants of .eu domain names may retain them.
Existing IP licences should be reviewed and may need to be amended and new licences should certainly consider the consequences of Brexit (eg if the territory is expressed to be the EU). For further information on the impact of Brexit on contracts in general, please click here.
While the UK remains within the EU, it can enforce judgments made in the UK in the rest of the EU. It is less clear how an English judgment will be enforced in an EU that does not include the UK. Typically “friendly” countries have been willing to enforce each other’s judgments but the process is more expensive and less certain. If possible, consider accelerating any pending litigation so as to obtain judgment and enforcement in the EU prior to Brexit.
The UK will need to legislate in order to manage intellectual property rights efficiently as, on exit, the UK courts will no longer be bound by EU law. It is clear that this process is going to take a considerable amount of time and therefore there is no need for urgent action. It is however sensible for businesses to start thinking about which IP rights are most likely to be affected in their own business by Brexit and what steps could be taken to improve their level of protection in the UK, including when drafting new contracts.