Brexit IP Update

Brexit IP Update

Key Contact: Cordelia Payne

The Withdrawal Agreement allows for the existing intellectual property system in the UK to continue as it is during the transition period until 31 December 2020 (IP Completion Day). However, it is during this transition period that preparations should be made for changes to how IP rights will be protected and enforced in the UK outside of the EU which may include the review and amendment of contracts,  IP rights portfolios, importation and enforcement strategies all in line with what we now know will happen after IP Completion Day.  Some changes within the IP field will be shaped by international agreements yet to be negotiated and ratified. Therefore, as a rights owner, IP portfolios, contracts and strategies must also be kept up to date with legal developments as they unfold in order to fully safeguard IP rights and maintain the status quo.

Acuity can help with all of the above and this note will provide summary guidance as to what changes you should anticipate during and after the transition period and the steps you should take to safeguard your IP rights post IP Completion Day.

Community Rights

European Trademarks (EUTMs):

• Existing EUTMs will be automatically converted into comparable UK rights at the end of the transition period, at no cost. You won’t receive a registration certificate, but you will be able to access details about the trademark at the UK Intellectual Property Office.
• If your application for an EUTM is pending at the end of the transition period, you will have nine months from the 1^st January 2021 to apply in the UK for the same protections. The application must relate to the same trademark that was the subject of the EUTM application.
• If your EUTM is currently pending, you should apply to register a comparable UK trademark in the nine months post exit day in order to benefit from the same filing date as the related EUTM application.
• If you are planning on filing an EUTM application before the 1^st January 2021, you should file both in the EU and UK in anticipation the application may be pending at the end of the transition period.

Registered Community Designs (RCDs):

• Existing RCDs will be transposed automatically into a comparable UK right, at no cost.
• Pending applications at the end of the transition period also have nine months to file an application in the UK for the same protections whilst maintaining RCD filing/priority dates.

Unregistered Community Designs (UCDs):

• The current EU system allows a three-year period of protection from copying for two- and three-dimensional designs that are unregistered. This covers clothing designs and patterns, for example.
• After the transition period, designs disclosed in the UK may be protected in the UK through the supplementary unregistered design – a new type of unregistered design right – which also creates protection from copying for two- and three-dimensional designs for three years.
• As this is yet to be clarified by the government, it is advised you consider obtaining registrations for any commercially valuable designs.

Patents

Both the UK Intellectual Property Office and the European Patent Office are not EU institutions. So, patents will continue to function in the same way as they do now. The following developments should be considered if you are an IP rights owner:

1. Whether the UK will still be included in the new EU Unitary Patent System. Patentees are offered the option of applying for a single pan-EU Unitary Patent covering most of the EU. The UK ratified this agreement in April 2018; however, the validity of this ratification will likely depend upon whether a deal is struck between the EU and UK.
2. Whether equivalent regulations for supplementary protection certificates (SPC) will be extended in the UK in the future. The additional protection that SPCs grant to patentees will remain in force until the end of the transition period. Applications still pending at the end of the transition period will be examined under the current framework. After the transition period, again, the manifestation of equivalent regulations is dependent upon how negotiations pan out over the next 11 months.

Copyright

International treaties on copyrights are independent from our relationship with the EU, so UK/EU reciprocal protections for copyright works are still assured. Copyright arrangements that are unique to EU member states will remain in force until the end of the transition period. The Withdrawal Agreement states these database rights will continue to be recognised in both territories for the remainder of the term.

Final considerations

• Enforcement Strategy – now is a good time to review your broader enforcement strategy. For example, after the transition period, if a new pan-EU injunction were to be introduced, the UK would not be covered. Proceedings should be brought in both the EU and UK to cover all of Europe.
• Exhaustion of rights – if your IP-protected goods have been placed on the UK market, they may no longer be considered exhausted within the EEA after the transition period. As a rights holder, you should consider whether you want to allow parallel exports of your IP-protected goods from the UK to the EEA after 1 January 2021.

We will continue to provide updated guidance regarding how best to safeguard your IP rights as the UK IP field adjusts to its separation from EU regulations. If you have any queries about the position of your IP rights, please get in touch with Cordelia Payne.