What does a 'no deal' Brexit mean for your intellectual property?

On Monday 24 September 2018, the UK government published further guidance on how intellectual property rights will be affected if the UK leaves the European Union in March 2019 without a formal agreement in place.

The notices highlight that a ‘no deal’ scenario remains unlikely and that negotiations are progressing well, but it is the government’s responsibility to prepare for all eventualities.

Trade Marks and Designs

In the event of a ‘no deal’ scenario, right holders of existing EU Trade Marks (EUTMs) and Registered Community Designs (RCDs) will have an equivalent UK right automatically granted. This means that the rights of owners of existing EUTMs and RCDs will continue to be protected and have enforceable registered rights in the UK with minimal administrative burden. These new registered rights will be subject to renewal in the UK.

For businesses, organisations and individuals who have pending applications for EUTMs and RCDs on the date the UK exits the EU, an opportunity will be provided to apply for corresponding protection in respect of the UK. However, any application will need to be filed within a period of nine months from the exit date, i.e. by 29 December 2019, if the priority and filing dates of the pending EUTM and RCD applications are to be retained. While this is good news, it should be noted that in this scenario the right holders will have to meet the costs of re-filing their applications in the UK to obtain corresponding protection.  

The UK government has indicated that they will also ensure that corresponding UK rights are provided in respect of all unregistered Community designs which are in existence when the UK leaves the EU. Hence the owners of such unregistered Community designs will continue to be protected and to have enforceable rights in the UK for the remaining period of protection.

Moreover, the UK government has proposed to create a new UK unregistered design right known as a “supplementary unregistered right” which will enable designs disclosed after the exit date to be protected in the UK under the terms of the existing unregistered Community design right. The creation of a supplementary unregistered design right would, as the name suggests, be in addition to the UK’s current unregistered design rights.

The full guidance on trade marks and designs can be read here.

Patents

The UK’s exit from the EU will not impact the current European patent system as the UK will remain a party to the agreement governing European patents.

It is expected that supplementary protection certificates will also continue to operate in the same way.

It remains unclear when, or even if, the Unitary Patent and the Unified Patent Court (UPC) will be established and whether the UK will be able to remain party to these systems.  These new systems are designed to help businesses protect and enforce their patent rights across the EU in a more streamlined way. Germany is the final country required to ratify the Unified Patent Court Agreement (UPCA) to allow it to come it into force. However, a constitutional complaint has been raised in Germany and so it is possible that the agreement may never be fully ratified.

If Germany does ratify the UPCA, the UK government has said it intends to stay in the Unitary Patent and the Unified Patent Court systems when it leaves the EU, but has acknowledged the possibility that the UK may have to withdraw from one or both systems in a ‘no deal’ scenario. Even if the UK is not party to the UPCA, UK businesses will still be able to use the Unified Patent Court and Unitary Patents to protect their inventions and to enforce their patents within the EU. However, in respect of the UK, businesses will have to use the UK national and European patent systems to protect their inventions and the UK courts to enforce their patent rights. Should the UPCA be ratified before the UK leaves the EU on 29 March 2019, any existing Unitary Patent rights will give rise to patent protection in the UK without the need for the right holder to take any action.

The full guidance on patents can be read here.

Copyright

The majority of copyright protection stems from international treaties which will be unaffected by the UK’s departure from the EU. However, there are also some EU cross-border copyright mechanisms which go beyond the provisions of the international treaties and these will be affected by a ‘no deal’ Brexit, e.g. sui generis database rights, portability of online content services (e.g. Netflix) and broadcasting rights.

The full guidance on copyright can be read here.

Geographical Indication

Geographical indication status protects food and drink products from imitation and evocation throughout the EU (for example Champagne, Parma Ham, Scotch Whisky).  If no deal is reached with the EU, the UK will set up its own GI scheme which will broadly mirror the current EU regime.

Further guidance on the UK GI schemes will be published in early 2019. It is anticipated that current UK GIs will continue to be protected by the EU’s GI schemes, but if this is not the case, UK producers would need to apply as ‘third country’ producers to regain the protection offered by EU GI status.

The full guidance on geographical indication can be read here.

Exhaustion of intellectual property rights 

Intellectual property rights provide their owners with certain exclusive rights. For example, a patent owner can prevent third parties from selling or distributing a product that is protected by their patent. However, once such a product is sold by the patent owner, or sold with their authorisation, then the right holder can no longer prevent customers who purchased the protected product from reselling or distributing the product. Their right is said to be exhausted.

The European Economic Area (EEA) exhaustion scheme, which the UK is currently part of, means that IP rights are considered exhausted once a product has been put on the market anywhere in the EEA with the right holder’s authorisation.

The UK will recognise the current EEA regime if it leaves the EU without a deal. This means that goods placed on the EEA market with the consent of the right holder will continue to be considered exhausted in the UK, and that parallel imports of these goods from the EEA to the UK will be able to continue unaffected. However, goods placed on the market in the UK with the consent of the right holder will not be considered exhausted in the EEA. Businesses exporting these goods from the UK to the EEA may therefore need to contact the right holder and seek their consent.

The full guidance on exhaustion of intellectual property rights can be read here.

If you have any questions arising from this article or about how Brexit could impact your business please contact us.


© 2018 Wilson Gunn