What has happened?
Now that the European Union (Withdrawal Agreement) Act 2020 (the WAA) has received its Royal assent and the EU has ratified the Withdrawal Agreement, the UK will leave the EU at 11pm on Friday 31 January 2020. While the UK will cease to be an EU Member State at that point, nothing will change as regards IP rights until 31 December 2020 at the earliest. This is because the Withdrawal Agreement provides for a transition period (now called an "implementation period" or IP period) extending to at least 31 December 2020.
During this period, the UK will continue to be bound by EU laws and to benefit from the existing EU IP regime. This means that EU-wide rights (such as EUTMs, RCDs and UCDs) will continue to cover the UK and actions relating to any such rights will continue as normal. The IP period is extendable by up to 2 years although the UK government has committed not to extend it, saying that a trade deal with the EU can be accomplished within this time frame.
How does this affect you?
It will be "business as usual" until the end of the IP period (31 December 2020 at the earliest). However, once the IP Period expires, the law governing EU-wide IP rights will change significantly. We have written extensively on the implications of this – see our guidance on portfolio management and IP disputes, as well as our practical tips. Although there is no need to take urgent action now, IP owners should:
- Review any potential and pending EU and UK disputes – there might be strategic advantages to trying to delay or accelerate proceedings, to relying on certain rights and to forum shopping.
- Ensure that any pending EUTMs are prosecuted expeditiously (including resolving any straight-forward oppositions) to maximise the chances of them registering before 31 December 2020 – EUTMs that are registered at the end of the IP period will automatically become registered in the UK as comparable UK trade marks (whereas EUTMs that are still pending at the end of the IP period will have to be refiled in the UK if UK protection is required).
- Plan ahead for 31 December 2020 including considering filing strategies, any use issues, recordals, reliance on unregistered designs, budgets, data management and professional representation at the EUIPO – note that Taylor Wessing's UK team will continue to handle the full range of actions and disputes before the EUIPO, thanks to members being qualified elsewhere in the EU and its close integration with Taylor Wessing's IP teams in 10 other EU Member States.
A late amendment was introduced into the WAA, potentially allowing lower courts in the UK to overrule retained EU case law in certain circumstances. Section 26 of the WAA, as enacted, gives a relevant minister power to set out in regulations the extent to which, and circumstances in which, specified UK courts and tribunals are not to be bound by retained EU case law.
Under previous versions of the WAA, only the Supreme Court (and the High Court of Justiciary in Scotland in specified circumstances) had power to depart from retained EU case law. This power to make regulations exists until the end of the IP period. There is no indication as yet that any such regulations will be introduced for IP, but we will keep the position under review. Assuming no such regulations are introduced for IP, only the Supreme Court will be able to overrule retained EU IP case law.
Lastly, the UK government has announced that it does not plan to implement the Copyright Directive. EU member states have until 7 June 2021 to implement the Directive. The UK has pointed out that it intends the IP period to end on 31 December 2020, meaning that it will not have a legal obligation to implement the Directive. However, if the IP period is in fact extended to a date after 7 June 2021, then the UK government might be forced to implement the Directive or risk being in breach of its obligations to the EU.