To print this article, all you need is to be registered or login on Mondaq.com.
The United Kingdom is gearing up to leave the European Union on
29 March 2019 and has been working hard to provide guidance on what
will happen to intellectual property (IP) rights in both a deal or
no deal scenario.
The good news is that, deal or no deal, holders of EU IP rights
will, for the main part, automatically retain those rights in the
UK. The primary exception is owners of EU trade mark, design, or
plant variety rights who file too late and cannot get them
'registered' before the end of the transition period on 31
December 2020 (or 29 March 2019 in a no deal scenario). These
owners will need to proactively identify which of these rights are
relevant to the UK and pay to file an equivalent UK
application.
It is therefore a good time for EU IP right holders to undertake
a review of their portfolios. If the current deal is agreed, it
will be worthwhile filling any gaps in EU portfolios as soon as
possible to try and obtain EU registration before the end of the
transition period. This will enable holders to take advantage of
the automatic conversion of EU registered rights to national UK
registrations, and avoid the costs of separate application fees in
each jurisdiction.
A review should also look to identify where there might be any
duplicate rights that result from the creation of new UK
registrations. Identifying these duplicate rights will ensure
holders rationalise their portfolios and reduce any ongoing
maintenance costs.
After Brexit, thought will be required to ensure that any new IP
rights are protected separately in both the EU and UK. IP rights
will also need to be enforced separately in each jurisdiction.
Is there any difference between a deal, or no deal,
Brexit?
The guidance for both scenarios is very similar and is intended
to ensure that current owners of European IP rights obtain
equivalent UK rights after Brexit. However, each scenario will
bring with it different timing. Geographical indications and the
current exhaustion of rights scheme will also be impacted
differently in a deal or no deal scenario.
We discuss each of these differences in more detail below. We
also outline the key proposals for each IP right in a deal or no
deal scenario in the table below.
Timing
If the deal is agreed, there will a transition period until 31
December 2020. During this time, the current IP regimes in UK and
EU will remain relatively unchanged. Most changes to IP rights will
occur at the end of this transition period.
In contrast, in a no deal situation, the changes to the IP
regimes will kick in from exit on 29 March 2019.
Geographical indications (GIs)
If the deal is agreed, all owners of EU GIs will get equivalent
protection in the UK. However, in a no deal situation, the UK will
set up its own GI scheme and will only automatically grant UK GI
status to existing GIs owned by UK producers.
Exhaustion of rights
The UK is part of the European Economic Area (EEA) exhaustion
scheme. This scheme essentially stops an IP owner from preventing
the sale of products which have been put on the market in one EEA
country from being sold in another EEA country.
If the deal is agreed, IP rights which were exhausted in the UK
and EU during the transition period will remain exhausted. It is
not clear what will happen after the transition period.
If no deal is agreed, the UK has stated it will continue to
recognise the EEA exhaustion scheme in the immediate term. This
will mean that there will be no change to the rules for importing
goods from the EEA into the UK. But it is not clear that the EU
will reciprocate this arrangement. If not, goods being exported
from the UK to EU countries will no longer be subject to the
exhaustion of rights scheme and UK distributors operating in the EU
will need to ensure they have the right permissions to do so.
So, what happens next?
The draft deal agreed between the UK and EU on 14 November 2018
still needs to be approved by UK's Parliament, who is expected
to vote on it on 12 December 2018. If successful, the EU Parliament
will then get to vote before the deal is passed. If either of these
steps fail, the UK will be looking at a no deal Brexit.
We are closely monitoring these developments and will keep you
updated.
In the meantime, if you are concerned about how Brexit may
impact on your business in the EU and UK, or would like any further
advice on the impact Brexit will have on your IP rights, please contact us.
IP right
|
Deal
|
No deal
|
Transition period |
- Until 31 December 2020. During this time, the IP regimes in UK
and EU will remain largely unchanged. Most changes in rights will
occur after this transition period ends.
|
- No transition period after exit on 29 March 2019. Any changes
in IP rights will occur on exit.
|
Trade marks (registered or pending) |
- All EU registered trade marks as at end of transition period
automatically converted to an equivalent UK registration without
charge.
- Owners of EU pending applications as at end of transition
period have 9 months to file for an equivalent UK application.
- UK to take measures by end of transition period to ensure the
owners of trade marks registered in the EU through the Madrid
(International Registration) system obtain protection in UK.
|
- All EU registered trade marks as at exit converted to an
equivalent UK national trade mark with 'minimal administration
burden'.
- Owners of EU pending applications as at exit have 9 months to
file for an equivalent UK application
- UK to take measures by end of transition period to ensure
owners of trade marks registered or pending in the EU through the
Madrid (International Registration) system obtain protection in
UK.
|
Use rights (trade marks) |
- Largely unaffected by Brexit
|
Designs (registered or pending) |
- All EU registered designs as at end of transition period
automatically converted to an equivalent UK registration without
charge.
- Owners of EU pending applications as at end of transition
period have 9 months to file for an equivalent UK application.
- UK to take measures by end of transition period to ensure the
owners of designs registered in the EU through the Hague
(International Registration) system obtain protection in UK.
|
- All EU registered designs as at exit converted to an equivalent
UK registration with 'minimal administration burden'.
- Owners of EU pending applications as at exit have 9 months to
file for an equivalent UK application.
- UK to take measures by end of transition period to ensure
owners of designs registered or pending in the EU through the Hague
(International Registration) system obtain protection in UK.
|
Unregistered designs |
- Owners of unregistered community designs as at end of
transition period will become owners of an equivalent enforceable
UK unregistered design right.
|
- Owners of unregistered community designs at exit will
automatically become owners of an equivalent enforceable UK
unregistered design right.
- UK to create new 'supplementary unregistered design
right' in the UK based on EU system.
|
Patents |
- Largely unaffected by Brexit
|
Other laws relating to patented pharmaceuticals,
agrichemicals and other biotech inventions including supplementary
protection certificates, compulsory licensing, exceptions from
infringement for testing |
- No practical change.
- EU law to continue to apply in respect of supplementary
protection certificates, and extensions of such certificates
applied for in the UK before end of transition period.
- All other existing EU laws will remain in force in UK through
EU (Withdrawal) Act 2018.
|
- No practical change.
- All existing EU laws will remain in force in UK through EU
(Withdrawal) Act 2018.
|
Unitary Patent (UP) and Unified Patent Court
(UPC) |
- UK will be part of UP and UPC systems if ratified by Germany
before end of transition period.
- UK looking at options to remain part of systems after this
date.
|
- UK looking at options to remain part of UP and UPC
systems.
- If do have to withdraw:
- any existing unitary patents will automatically give rise to an
equivalent UK patent.
- UK businesses will not be able to use these systems to protect
new inventions in the UK.
- still be able to use systems to protect new inventions in
contracting EU countries.
|
Plant Variety Rights (PVR) |
- All EU registered PVRs at end of the transition period
automatically converted to an equivalent UK registration free of
charge.
- Owners of pending applications as at 31 December 2020 have 6
months to file for an equivalent UK application.
|
- All EU registered PVRs as at exit converted to an equivalent UK
registration without right holders needing to take any action.
- For pending EU applications, a new UK application will need to
be made following the normal process and using the same priority
date and registration tests.
|
Geographical indications |
- Owners of EU GIs get equivalent protection in UK.
|
- UK to set up own UK GI regime which will broadly mirror the
current EU regime.
- All existing GIs owned by UK producers given new UK GI status
automatically.
- UK not required to recognise EU GIs but EU producers will be
able to apply for UK GI status.
- UK producers will need to apply for EU GIs as 'third
country' producers. This will require UK GI protection.
|
Copyright |
- Largely unaffected.
- Exception is 'cross-border copyright mechanisms'. These
rights will be incorporated into UK law through EU (Withdrawal) Act
2018, but there will be no reciprocity of these rights in the EU
unless further agreements are reached.
|
Database rights |
- UK holders of database rights that arise before end of
transition period will retain an equivalent enforceable right in
the UK.
|
- UK database right holders will retain protection in the UK but
will no longer have protection in EEA.
|
Exhaustion of rights |
- UK rights exhausted both in EU and UK before end of transition
period remain exhausted.
- Not clear what happens after transition period.
|
- UK to continue to recognise EEA regional exhaustion regime in
immediate term.
- Not clear whether EU will give reciprocal protection. If not,
may be some restrictions on what goods can be exported from UK to
EEA.
|
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
POPULAR ARTICLES ON: Intellectual Property from European Union
The UK Cider Case – Thatchers v Aldi
ENS
A recent UK trade mark judgment generated huge public interest. It was, as is so often the case in the UK, one of those classic supermarket look-alike cases.
TESTAROSSA: Is Second Hand Use Genuine Use?
Venner Shipley
Ferrari's TESTAROSSA trade mark has been of great interest to the European Courts, although Ferarri's luxury TESTAROSSA sports car has not been produced since 1996.