The UK government has published a series of four technical notices on intellectual property in the event of the UK leaving the EU on 29 March 2019 without an agreement (a ‘no deal Brexit’). The technical notices were published on 24 September 2018 and cover: Trade marks and designs; Patents; Copyright; and Exhaustion of intellectual property rights. The notices set out the UK government’s plans for the ongoing recognition of existing IP rights in the UK in the event of a no deal Brexit. They also cover wider mechanisms and arrangements relating to IP, such as cross-border copyright and exhaustion.

Businesses operating in the UK and EU should consider whether and how the changes will affect them, if the UK leaves the EU without a deal (a scenario which the UK government considers unlikely given the mutual interests of the UK and the EU in securing a negotiated outcome).

This blog post summarises the key points from each of the four notices about the consequences for IP rights of a no deal Brexit. Copies of the technical notices are available on the UK Intellectual Property Office’s website.

Trade marks and designs

Rights holders with an existing registered EU trade mark or registered Community design will be granted a new UK-equivalent right that will come into force from the date that the UK exits the EU. Anyone with an EU application underway when the UK exits the EU will have a 9-month period (starting on the date of exit) to apply for equivalent UK rights, retaining the date of the EU application for the purposes of priority.

Unregistered Community design rights that exist at the point that the UK leaves the EU shall continue to be protected and enforceable in the UK. The UK government intends to create a new unregistered design right in UK law that mirrors unregistered Community design rights.

The notice states that the UK government is working with the World Intellectual Property Organization on the protection in the UK of trade marks and designs that have been registered through the Madrid and Hague systems designating the EU.

Prior to Brexit, the UK government will publish further information about the status of legal disputes in the UK courts at the date of Brexit that involve EU trade marks or registered Community designs.

Patents

There are only a few areas of UK patent law based on EU legislation. Relevant EU law will be retained in the UK through the EU Withdrawal Act 2018. For example, this means that the EU’s rules on supplementary protection certificates will be kept in UK law, which will then form the UK’s own supplementary protection certificate regime.

With respect to the Unified Patent Court and unitary patent system, the notice states that if the Unified Patent Court comes into force, the UK government will explore whether it will be possible for the UK to remain within the Unified Patent Court and unitary patent system in a ‘no deal’ scenario.

If no deal is reached before Brexit, businesses will no longer be able to use these methods to protect inventions in the UK and they will have to apply for separate UK rights. UK business will still be able to use the Unified Patent Court and unitary patent system to protect their inventions in the EU.

Copyright

The technical notice describes the body of EU law on copyright and related rights which will be affected by a no deal Brexit. These include:

  • Database rights under the Database Directive;
  • Portability of online content service under the Portability Regulation; and
  • Orphan works under the Orphan Works Directive.

Although the UK’s continued membership of the main international treaties (for example, the Paris Convention and the Berne Convention) on copyright and related rights will ensure continued protection of copyright works in the UK and of UK works in the EU, the EU cross-border copyright mechanisms extend only to member states of the EU or EEA. Therefore, upon Brexit the UK will be treated as a third country and without a deal, reciprocity under these mechanisms will cease to apply to UK rights holders. This means that UK business may not be able to claim database rights in the EEA, UK consumers may have restrictions placed on their access to online content when travelling within the EU, and organisations applying the orphan works exception in the EEA may be infringing copyright.

Exhaustion of IP rights

Currently, the UK is part of the EEA exhaustion scheme which means that the ability to control distribution and resale of products protected by IP rights is considered exhausted once the products have been put on the market anywhere in the EEA by, or with the permission of, the rights holder.

Upon a no-deal Brexit, the UK government will continue to recognise the EEA regional exhaustion regime in the immediate term to provide continuity to businesses. This means that there will be no change to the rules for importing goods from the EEA into the UK (for example, goods put onto the market in Germany with the rights holder’s permission can be imported into the UK).

The same may not apply for goods that are imported from the UK into the EEA. This means that business undertaking such activities may need to obtain permission from the relevant rights holder before goods are imported into the EEA from the UK (because following a no-deal Brexit, goods put onto the market by the rights holder in the UK first, before being put onto the market by the rights holder in the EEA, may not be considered to have exhausted rights in the EEA).

The notice states that the UK government is currently considering all options for how the exhaustion regime should operate after this temporary period.

This article was originally published on AllAboutIP – Mayer Brown’s blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.