Brexit and the future of Intellectual Property Rights

08 October 2020

Author: Dawn McKnight
Practice Area: Intellectual Property

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On the 31st January 2020, the United Kingdom’s controversial departure from the European Union (“EU”) came to fruition. The terms on which this departure would be based caused huge debate amongst political leaders with fears that an agreement would never be reached. With the UK facing a potential ‘no deal’ exit from the EU, intellectual property (“IP”) rights holders faced great uncertainty surrounding the future of their status. To resolve this uncertainty, the UK government introduced a number of statutory measures in the form of Regulations (“2019 Regulations”) designed to come into force in the event of a ‘no deal’ exit. The 2019 Regulations clarify the position on IP rights following the UK’s departure from the EU for the purposes of maintaining continuity.

The fears surrounding a ‘no deal’ exit were put at bay with the implementation of the Withdrawal Agreement. The Withdrawal Agreement introduced the ‘transition period’, during which time EU law will continue to apply in the UK until the transition period concludes. The introduction of the Withdrawal Agreement means that the 2019 Regulations do not account for the transition period and if introduced, their retroactive application would implement changes from exit day rather than the end of the transition period. To rectify this, the Intellectual Property (Amendments Etc.) EU Exit Regulations 2020 was introduced to amend the 2019 Regulations so that they come into force at the end of the transition period. The primary aim of this change is to ensure any EU IP rights arising between the beginning and end of the transition period are adequately protected in the UK and continue to maintain EU status.

After the transition period

1. Trademark

Under the terms of the Withdrawal Agreement, there will be a number of changes to certain IP rights at the end of the transition period, including European Union Trade Marks (“EUTM”).

Registered EUTMs: These will no longer have effect in the UK at the end of the transition period. To rectify this, holders of registered EUTMs will automatically become holders of comparable UK trademarks at no additional cost. The comparable UK trademarks will keep the original EUTM filing and priority dates. The position is the same for Registered Community Designs (“RCD”).

Pending EUTM Applications: Unlike registered EUTMs, those with EUTM applications still pending at the end of the transition period will not automatically receive a comparable UK trademark. However, you will have the opportunity to register a comparable UK trade mark for up to 9 months following the transition period. You will be able to retain the earlier filing date of the pending EUTM, provided the details of the comparable UK trademark match those of the corresponding EUTM. The position is the same for RCD.

Reputation: A comparable UK trade mark will maintain any reputation acquired by the corresponding EUTM up until the end of the transition period.

2. Copyright

Copyright law in the UK is largely derived from international treaties and the EU framework. Consequently, much of the UK’s national laws on copyright contain references to the EU, the EEA and member states. The 2019 Regulations rectified this issue by removing or amending any such references to ensure that copyright can continue to be governed by national law after the transition period.

Guidance from the Intellectual Property Office (“IPO”) states that most of UK copyright works will be largely unaffected in terms of maintaining protection in the EU as a result of international treaties.

3. Patents

The European Patent Convention (“EPC”) is an international treaty which established the European Patent Office (“EPO”). As the EPO is not EU governed, there is no impact on the relationship between the UK and the EPC following the UK’s departure from the EU. Consequently, existing European patents covering the UK are not impacted by Brexit.

4. Exhaustion

Under the Withdrawal Agreement, IP rights exhausted in the UK and EU before the end of the transition period will remain exhausted.

5. Pending Supplementary Protection Certificates (“SPCs”) Applications

SPCs are granted as national rights and therefore there is no requirement for the creation of a UK comparable right. Under the Withdrawal Agreement, any SPC applications which are pending at the end of the transition period are to be examined under the current framework.

Divergence

National law and provisions within the Withdrawal Agreement ensure that there is a degree of continuity with regards to protection of IP rights. With the relationship between the UK and EU ending, there will inevitably be a divergence in approaches within the IP framework in the future. The UK has already confirmed that it will not be enacting legislation implementing the new Directive on Copyright in the Digital Single market, despite voting in favour of the Directive in 2019. Chris Skidmore, the Universities and Science Minister, stated that “the Government has no plans to” implement the Directive and “Any future changes to the UK copyright framework will be considered as part of the usual domestic policy process”. It remains to be seen the level of impact that this will have on IP rights holders within the UK.

If you have any queries the Intellectual Property team at Carson McDowell will be able to help.

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