As you will no doubt know by now, on 23 June 2016, the UK voted to leave the European Union.  While the precise impact of the “Brexit” is unclear at this stage, the “leave” vote will definitely have implications on how you manage and enforce your Intellectual Property rights in Europe.

Key take away points:

  • Overall: in the short term, it is business as usual with an orderly transition for registered rights envisaged.

Short / medium priorities:

  • Licensing / brand sharing: Any existing and new IP licence, agreements, etc. that include a definition of the EU (e.g. as the territory) should be checked to see whether it is the EU as constituted at the date of agreement or as constituted from time to time. Amendments may be required.

Watching Brief:

Patents: No changes expected to existing patent laws in the UK and Europe (EPC). Notably, the EPC is entirely independent from the EU. There will be an impact on the pending Unitary Patent, but it is not possible to foresee where that will end up.

Trade Marks / Designs: No immediate changes for UK and EU designs and trade marks. Once the UK has left the EU (not for several years still), it is expected that the EUTMs/RCDs would be split and the UK part be transformed into a national UK right, with the rest of the EUTM/RCD covering the remainder of the EU.

Copyright: No immediate changes expected for copyright laws, though impact of separation on territorial licensing to be seen once the UK is no longer subject to EU competition laws.

Sui Generis Database Rights: Databases created in the UK may no longer be protected.

Trade Secrets: It is unclear whether the UK will implement the recently passed Trade Secrets Directive.

What next?   Much of what will happen is unclear at this stage and we will provide regular updates on our dedicated “Brexit Blog” in due course.  Importantly, the UK government has at least two years, if not longer, to negotiate the details of its withdrawal from the EU, during which the UK does however remain an EU Member State.  Therefore, it is business as usual for the time being and we expect an orderly and calm transition over the next two to three years.   “Brexit” will not have any impact on national rights, but it will affect pan-EU rights, namely European Union Trade Marks (EUTM) and Registered Community Designs (RCD) which will no longer extend to the UK. However, until such time as the UK has officially left the EU, existing EUTMs and RCDs will still cover the UK.   Patents are subject to a more complex array of legislation including the European Patent Convention (EPC), which is not an EU instrument and will not be directly affected.  Having said that, the UK’s exit is expected to have a significant impact on the proposal to implement the Unitary Patent regime for a majority of EU Member States, as well as the proposal for a Unified Patents Court (UPC). Brexit is also likely to at least delay implementation of the UPC for the remaining participants since implementation of the UPC currently requires ratification by the UK. It will take time to rework the implementation arrangements as well as to renegotiate other features such as the location of the life sciences branch of the UPC Central Division, which was intended to be located in London.   In the field of copyright, EU directives and regulations impact the protection of literary and artistic works, particularly digital media. While this is in essence national law, it would be difficult for the UK to function independently of the other countries of the EU in the face of increasing integration of markets for the consumption of digital content and it is likely that the UK will voluntarily decide to conform to the copyright standards adopted in the rest of the EU, much as Switzerland has done.

The below provides an overview on what you need to know now.

Patents

Implication of “Brexit”

  • Post Brexit, the UK will remain a signatory to the European Patent Convention (EPC) and there will be no changes as to how a European Patent (UK) can be obtained via the European Patent Office.
  • However, the proposed Unitary Patents Court (UPC) and Unified Patent will not apply to the UK since the signatories to the UPC must all be EU Members. Further, the Life Sciences Division of the UPC will now in all likelihood not be located in London.
  • The decision to leave the EU will not affect European patent holders or restrict the ability of UK patent attorneys to carry out European patent work.

What you need to know now

There are no changes to existing patent law in the UK and Europe (EPC).  The EPC is entirely independent from the EU.   The proposed UPC however is linked to EU membership.

Trade Marks  

Implication of “Brexit”

  • After a transition period, the UK will no longer be covered by the EU trade mark system and EUTMs will no longer cover the UK
  • Brand owners wishing to protect new trade marks in the UK will then need to obtain a UK trade mark registration (either a national UK registration, or via an International trade mark designating the UK under the Madrid Protocol).
  • The UK court system will no longer have EU trade mark Courts.
  • It is expected that there will be some kind of transitional process, which will provide for a conversion of EU Trade Mark and EU Design registrations in the UK.
  • UK trade mark laws may in time develop independently from EU law.

What you need to know now

  • While there will be long term changes and the UK will no longer be part of the EU trade mark system, it is expected that there will be a orderly transitional period.
  • For the time being it is business as usual and we advise to file for a EUTM, which for the time being still covers the UK.
  • Once the UK has left the EU, it is expected that the EUTM would be split and the UK part be converted into a national UK right, with the rest of the EUTM covering the remainder of the EU.
  • If brand owners have a particular focus on the UK now, they may consider filing a UK trade mark to supplement an EUTM prior to conversion.

Community Designs

Implication of “Brexit”

  • After a transition period, the UK will no longer be covered by the EU design system and Registered Community Designs (RCDs) and Unregistered Community Designs will no longer cover the UK.
  • Registered Design protections would be possible via the Hague system at WIPO and on a national level, via the UKIPO.
  • It is expected that there will be some kind of transitional process, which will provide for a transformation EU Design registrations in the UK
  • UK design laws may in time develop independently from EU law. 

What you need to know now

  • Once the UK has left the EU, it is expected that the RCD would be split and the UK part be transformed into a national UK right, with the rest of the RCD covering the remainder of the EU.
  • If right owners have a particular focus on the UK, they may wish to consider filing a UK registered design.
  • We will provide further  updates in due course.

Enforcement

Implication of “Brexit”

  • After transition, UK courts will no longer adjudicate on disputes relating to EUTMs and designs.
  • Equally, pan-EU remedies granted by EU courts will not (or in case of existing order no longer) extend to the UK.
  • Should the UK not join the EEA, there may be an impact on exhaustion of rights relating to parallel imports.
  • Equally, there may also be an impact on the free movement of goods and customs notices.

What you need to know now

  • No changes for the time being. We will provide updates in due course.

Licences / Co existence agreements

Implication of “Brexit”

  • Existing and future licence and co-existence agreements, brand-sharing agreements, etc. may include a definition of the territory which refers to the EU.
  • Any new agreements that include a definition of the EU (e.g. as the territory) should be clear whether it is the EU as constituted at the date of agreement or as constituted from time to time.

What you need to know now

  • It is advisable to review and potentially “update” any agreements that refer to the EU as a territory.

Copyright

Implication of “Brexit”

  • Copyright is the least harmonised IP right. There is no registration system in the UK or on a Pan-EU level. Therefore, national law could continue as is, though there may be some impact on exhaustion principles should the UK not end up in the EEA (likely).
  • One area to watch in particular is the EU’s Satellite and Cable Directive which defines where and how satellite broadcasters and cable companies should clear copyright. It includes specific rules concerning the point of “uplink”. For satellite, rights are acquired for the EU country where, under the control and responsibility of the broadcasting organisation, the uplink (which sends the programme signal to the satellite for its communication to the public) takes place.
  • Under this “country of origin” principle, rights cleared in one country allow the broadcasting organisations to broadcast to the whole of the EU. In determining the licence fees, parties should take into account the actual and potential audience including, if relevant, the audience located outside of the uplink country

 What you need to know now

  • No immediate changes are expected.
  • Unless the UK decides to join the EEA, Brexit may have an  impact on the broadcasting industry if the uplinkers in the UK can no longer benefit from the country of origin rule in the SatCab Directive.
  • We will provide further  updates in due course.

Sui Generis Database rights 

Implication of “Brexit”

  • Sui generis database rights are a EU law creation and post-Brexit a database created in the UK would no longer be protected, unless the UK joined the EEA.

 What you need to know now

  • No immediate changes – we will provide updates in due course.

Digital Single Market

Implication of “Brexit”

  • Post Brexit, the UK will be excluded from formally influencing EU legislation on new developments and technologies which are likely to affect intellectual property, such as the Digital Single Market, including subjects such as online transmission.  In practical terms there will still be opportunities for interested parties to communicate their views via lobbying and other channels, particularly for organisations with operations within the remaining EU states, but for the next two years, and in particular in relation to DSM, there is no doubt that the UK’s moderating, more business friendly influence on the Commission is likely lost.

What you need to know now

  • No immediate changes – we will provide updates in due course.

Trade Secrets 

Implication of “Brexit”

  • On 27 May 2016, the European Council formally adopted the “Directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure
  • The so-called Trade Secrets Directive was published in the Official Journal of the EU on 15 June 2016 and will come into force on 5 July 2016 after which Member States have two years to incorporate the provisions into national law. 

What you need to know now

  • Depending on when the UK gives the EU official notice of its intention to leave the EU, the Directive may not have to be implemented in the UK.
  • How the UK will implement and/or change its existing trade secrets protection is uncertain at this point.