Whilst the negotiations with the EU to reach an agreement over Brexit are still in progress, as the exit date approaches the UK Government has taken action to accelerate preparations for an unlikely ‘no deal’ scenario. The preparation programme has resulted in a series of technical notices including guidance papers on trade marks and designs, copyright, geographical indications and exhaustion of intellectual property rights published on 24 September 2018.
In the guidance, the Government assures that “Such an acceleration does not reflect an increased likelihood of a ‘no deal’ outcome. Rather it is about ensuring our plans are in place in the unlikely scenario that they need to be relied upon.”
So, where would this leave your IP rights if there was no Brexit deal?
Trade Marks & Designs
The guidance states that absent of a deal on Brexit by March 2019, the UK government will ensure that all existing registered EU trade marks and registered Community designs will continue to be protected and enforceable in the UK by means of providing an optional equivalent UK trade mark or UK design registration.
The new equivalent right will be granted at the point of the UK’s exit from the EU at a “minimal administrative burden”.
EU trade mark and registered Community design applications that are pending at the point of exit will be provided with a nine-month period from the exit date to refile in the UK. These applications will retain the earlier application date of the EU application for priority purposes and any UK seniority claims will also be recognised. However, the applicants will be required to cover the costs of refiling which will be in line with the regular UK application fees.
Existing registered EU trade marks and registered Community designs will continue to be valid in the remaining EU member states, and UK applicants will continue to be able to apply for protection in the EU as any other third country applicants.
As regards to International registrations, the UK Government is working with the World Intellectual Property Office to provide continued protection in the UK after March 2019 of trade mark and design applications and registrations filed through the Madrid and Hague systems which designate the EU.
Unfortunately, as yet there is no guidance on how ongoing legal disputes involving EU trade marks or registered Community designs will be handled.
The guidance states that unregistered Community designs will continue to be enforceable and protected in the UK for the remaining period of protection of the right. In addition, for designs that are disclosed after the UK leaves the EU, the UK will automatically provide right holders with a new UK unregistered design right (referred to as the ‘supplementary unregistered design right’) which will mirror the characteristics of the unregistered Community design right (i.e. protects design features including surface decoration and shape as well as being valid for three years from the point of disclosure).
The guidance highlights that the UK is party to the main international treaties on copyright and related rights independently. This means the scope of protection for copyright works in the UK and UK works abroad will largely remain unchanged.
There are however various “EU cross-border copyright mechanisms” which only extend to member states of the EU and EEA. Upon exit from the EU these mechanisms will cease to apply to the UK, and therefore UK owners may find their rights to be unenforceable in the EEA. This could mean that UK owners of database rights may not be able to enforce these rights within the EEA; also, UK consumers may see restrictions to their online content when visiting the EU.
Geographical Indications (GI)
The UK Government has advised that in the unlikely event that no deal is reached by March 2019, the UK will set up its own GI scheme which will mirror that of the current EU protection as well as complying with the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). This will mean that the current 86 GI-protected UK product names will automatically receive new UK GI status. In addition, there will be provisions in place for EU producers to apply for UK GI status.
If this situation arises, the UK will introduce a new UK logo for GI products to replace the current EU logo. Another consideration is that while the Government hopes that all current UK GIs will continue to be protected by the EU’s GI schemes, if this is not the case, UK producers may have to apply to the European Commission as a ‘third country’ producer to regain the protection offered by EU GI status.
The guidance suggests that UK producers might also consider protecting their products by applying for EU Collective Marks.
Finally, in respect of international protection of UK GIs, irrespective of the outcome of the EU negotiations, it is expected that UK GIs currently protected by EU free trade agreements and other sectoral agreements will continue to be protected.
Exhaustion of Intellectual Property Rights
As it stands, the UK is currently part of a regional European Economic Area (EEA) exhaustion scheme, whereby once an IP right has been put on the market by the rights holder or by an individual with the right’s holder’s permission anywhere in the EEA, the rights are henceforth exhausted.
The UK Government has advised that they will continue to recognise the EEA’s exhaustion scheme following Brexit if no deal can be reached for at least a temporary period; this means that there will be no immediate change to the rules affecting the imports of goods into the UK.
The guidance does highlight that there may be some restrictions on the parallel import of goods from the UK to the EEA. In light of this, the UK Government has advised that businesses undertaking such activities may need to check with EU right holders to see if permission is needed.
Importantly, goods placed on the UK market by or with the consent of the right holder after the UK has exited the EU will not be considered exhausted in the EEA.