In September, the UK Intellectual Property Office (“UKIPO”) held a series of three meetings with representatives from various bodies concerned with the protection of Intellectual Property rights in the UK to explore the implications of the Brexit referendum vote on 23 June. UKIPO identified three priorities for discussion:
1. The question of the recognition of patents, trade mark and design attorneys and lawyers before EU courts and tribunals;
2. The impact on EU and UK unregistered design rights; and
3. The impact on UK and EU registered trade mark and design rights.
The purpose of these meetings was to assist UKIPO in identifying specific difficulties and concerns and, to the extent that it was possible to make them at such an early stage of the process when so little is known about exactly how and when Brexit may occur, what possible solutions to the identified risks and difficulties there may be. This will feed into the much wider work being carried out by the Department for Exiting the EU of the UK Government (“DEXEU”).
Impact assessments will also be required for each of the options, which are then likely to be put out to public consultation. The anticipated financial and business impact of registered and unregistered rights being lost as a result of no action being taken is so great that this is not being considered as a serious possibility.
The first session centred on rights of representation before the EUIPO and the CJEU. There was a brief discussion on the current position surrounding the different rights of representation for each of the professions represented (Trademark Attorneys, Solicitors and Barristers).
There was a lively and lengthy discussion on the issues of privilege for each profession (trademark attorney´s, solicitors and barristers) and the need to preserve it post-Brexit. The meeting moved on to focus on a number of different options to allow for UK professionals to continue to represent clients on trademark matters in the EU. A number of options were put forward, ranging from no change of representation for UK professionals, a form of grandfathering for those qualified to act before the EUIPO and CJEU, to a bilateral agreement whereby other EU nationals can act in the UK in return for UK professionals being able to do so in the EU. The pros and cons for each of the main options were discussed with a particular focus on no loss of representation rights in the EU.
At the same time, the UK IPO was looking into ways of gauging the potential loss of revenue should the UK profession lose its rights of representation before the EUIPO and CJEU.
INTA was represented by Simon Clark (Berwin Leighton Paisner LLP, member of INTA Designs Committee) at the meeting on unregistered design rights on September 21. Patrick Wheeler (Collyer Bristow, member of the Designs Committee) and Giles Corbally (Bomhard IP, Chair of the European National Offices Subcommittee of the Trademark Office Practices Committee) represented INTA at the third meeting on registered designs and trademarks on September, 28.
There was a lively debate and discussion at both meetings, which were held under Chatham House Rules, so while the content can be published, the individual comments cannot be attributed to any person or organisation. What emerged was a clear commitment to ensure that mechanisms will be proposed by the UK Government to protect the existence, priority and seniority of existing unregistered and registered rights within both the UK and EU once the UK is no longer an EU member.
A brief summary of the key discussion points is set out below:
Both unregistered Community Design right (“UCD”) and UK unregistered design right (“UKDR”) were recognised as valuable rights that needed to be preserved in some form, albeit their ambit and length of protection is quite different. One issue is the inability of UKDR to protect surface decoration, which is a real problem for designs such as clothing and furniture.
There is also an unresolved problem in UK case law at the interface between UKDR and copyright. Brexit may provide an opportunity to address these issues and try to simplify both this and the problem of overlapping protection that can apply to a single design.
Another issue in relation to UCD was whether first publication of a design has to occur within the EU or not. The German court decision Gebäckpresse II suggests that it does. This would mean that both UK designers and international designers who currently launch new collections in the UK would no longer obtain UCD protection for those designs post Brexit.
In relation to enforcement, a clear issue is whether EU injunctions can be awarded and what their effect will be in the EU and in the UK. Some possible solutions were discussed including changes which could be made to UKDR. A hybrid right could be created by improving the existing UKDR provisions or adopting the CDR provisions with some amendments, such as extending the term, but these suggestions will need much greater thought and analysis.
The position is complicated by the fact that not all stakeholders share the same interests in what is seen as a desired outcome. For example, where smaller design businesses tend to want unregistered rights and low or no – costs solutions, large design businesses tend to prefer the certainty of registered rights.
Registered Rights: UKTMs, EUTMs, RCDs and UKRDs
The final meeting was scheduled to cover both registered designs and registered trademarks in the UK and EU, but in the event there was only time to discuss trademarks. While a number of the problems and possible solutions that were identified will have a similar application in the context of designs, there are also unique issues concerning designs which will need to be considered separately.
The meeting focussed on possible ways in which the UK government could either negotiate a bilateral agreement with the EU under which the UK would remain part of the EU trade mark system after Brexit or alternatively enact national legislation which would enable EU trade mark owners to continue owning effective rights in the UK post-Brexit.
The concept of the UK continuing as part of an EU IP rights system post-Brexit was considered a radical solution with very significant political and practical implications. Discussion on the said subject was deferred to another meeting.
This meeting focused on a range of different options providing for EUTMs (and, by extension, RCDs) to have equivalent UK protection. Six different options were discussed, ranging from allowing EU trade marks to be enforced in the UK automatically, through to a procedure for converting or transforming EU trade marks into an equivalent UK trade mark with the same commencement and priority dates, with the converted mark undergoing a full examination procedure. Pros and cons for each of the main options were discussed, with particular concerns expressed regarding costs, no loss of protection, language translation issues, possible approaches to challenges on the basis of non-use, seniority, and the status of pending applications and pending validity challenges.
While no firm conclusions were reached at any of the three meetings, they achieved a growing consensus on the key issues and will assist DEXEU in identifying preferred options to put forward for discussion and negotiation. Further meetings are planned to explore issues and solutions in more detail. This will be a lengthy process, and it is only a very small part of the very large task which faces DEXEU, but INTA will continue its dialogue with the UK Government and UKIPO to make sure that the importance of continuing protection for registered and unregistered trademarks and designs is not lost.
INTA will continue monitoring the subject and informing its members on the potential implications of Brexit on IP to help them anticipate upcoming changes. Stay tuned and check INTA calendar of events.
With the kind contribution of Simon Clark (Berwin Leighton Paisner LLP), Giles Corbally (Bomhard IP) and David Stone (Simmons & Simmons).