European Union: 'If There's No Deal' Brexit IP Guidance From UK Government

Last Updated: 28 September 2018
Article by Gordon Harris and Kate Swaine

On 24 September 2018, the UK Government published a series of guidance papers explaining arrangements in progress to manage Brexit in the event of a 'no deal' scenario (on 29 March 2019). Five papers have been published in respect of intellectual property. This article explains the most notable take-homes from those five papers.

(Please note, however, that in the event a deal is reached between the UK and the EU on the terms of the UK's withdrawal, it has been indicated that it will include a transition period lasting from 29 March 2019 until 31 December 2020. During such a transition period, the status quo would largely remain in place for intellectual property. The Government's 24 September 2018 guidance does not address this scenario).


At present, the UK is part of the single market's regional exhaustion scheme for intellectual property. Broadly speaking, this means that when goods are placed on the market anywhere in the EEA by or with the permission of the owner of the intellectual property, the owner's rights in that intellectual property are exhausted.

The UK Government's 24 September 2018 Brexit exhaustion guidance states that in a no deal Brexit scenario, "the UK will continue to recognise the EEA regional exhaustion scheme" in the immediate term. This will facilitate continuity in respect of parallel imports into the country; for example, of medicines placed on the market in the remaining single market being imported into the UK.

Looking beyond this immediate or temporary period, the Government has said that it is undertaking a research programme and considering all options for how the exhaustion regime should work.

However, from the perspective of the countries in the remaining single market, following Brexit in a no deal scenario, the UK would be outside their regional exhaustion scheme. Parallel imports from the UK into the EEA therefore may no longer be possible or may need the right holder's consent.

Patents and Supplementary Protection Certificates

The UK Government's 24 September 2018 Brexit patents guidance contains no real surprises. Both of the existing patent systems - the national patent system and the European patent system - are largely outside the remit of EU law and will not be impacted by Brexit. European Patent Attorneys based in the UK will continue to be able to represent applicants before the European Patent Office.

Further, while the system for patent term extension in qualifying circumstances (supplementary protection certificates (SPCs)) derives from EU law, this has long been implemented into UK national law. Combined with the planned preservation of the acquis by the UK's EU Withdrawal Act 2018, the system for grant and enforcement of SPCs in the UK will not be impacted by Brexit.

The most notable take-home from the 24 September 2018 guidance is that there will be no immediate change to the current system of requiring an applicant for a UK national patent to supply an address for service which is in the UK, another EEA state or the Channel Islands.

Although this is not noted in the 24 September 2018 Brexit patents guidance, in a no deal scenario the present regimes governing service, jurisdiction and enforcement in the EU and the EEA will cease to cover the UK. Such matters will instead be governed, from the perspective of the UK courts, by the common law. These well-established rules and procedures presently govern matters of this nature in UK proceedings in respect of parties in non-EU/EEA countries, such as the US.

Whether the UK will be able to remain within the new Unified Patent Court and Unitary patent systems following a no deal Brexit remains unresolved.

Trademarks and designs

Registered EU-wide trademarks and designs

The UK Government's 24 September 2018 Brexit guidance for trademarks and designs reiterates the Government's plans, in a no deal scenario, to extract UK registrations from EU trade mark and ("Community") design registrations existing on the date of Brexit. The extracted UK right will be provided with "minimal administrative burden" for the owner of the EU right, who will be notified that a new UK right has been granted.

Such extracted UK trademark and design registrations will then be subject to renewal in the UK, may form the basis for proceedings before the UK Courts and the UK Intellectual Property Office's (IPO) Tribunal, and may be assigned and licensed independently from the remaining EU right.

Further, applicants for EU trademark and design registrations, which are ongoing at the date of Brexit, will have a period of nine months to apply in the UK for the same protections, retaining the date of the EU application for priority purposes. The UK Government will recognise filing dates and claims to earlier priority and seniority recorded on the corresponding EU application. Right holders taking this step will, however, need to meet the cost of refiling the application in accordance with the UK application fee structure.

The UK Government is working with the World Intellectual Property Organisation to provide continued protection in the UK for trademarks and registered designs filed through the international systems (Madrid and Hague respectively) and designating the EU. This includes practical solutions for pending applications.

As with patents, the UK Government plans no immediate change to the current address for service rules, which permit addresses in the UK, EEA or the Channel Islands.

In the European Union Intellectual Property Office (EUIPO), natural or legal persons that are domiciled or have a seat only in the UK will continue to be able to file an application for registration of an EU trademark. However where representation is necessary, applicants and owners of EU trademark and design registrations must comply with Article 120(1) of Regulation 2017/1001 (trademarks) and Article 78(1) of Regulation 6/2002 (designs).

Unregistered EU-wide design right

EU-wide unregistered Community design right protects slightly different aspects of a design than is protected under the UK national unregistered design right system (which will not be affected by Brexit).

The 24 September 2018 guidance reiterates that all unregistered Community designs which exist at Brexit will continue to be protected and enforceable in the UK for the remaining period of protection of the right, with no action required by the right holder. In addition to this, the UK will create a new unregistered design right in UK law which mirrors the characteristics of the unregistered Community design.

UK proceedings concerning trademarks and designs

The UK Government has also indicated that provision will be made regarding the status of legal disputes involving EU trademarks or registered designs ongoing at the point of Brexit.

The change of regimes governing service, jurisdiction and enforcement in respect of the UK and the EU/EEA noted above will apply also in the context of litigation concerning trademarks and designs (and civil litigation generally).


The UK Government's 24 September 2018 Brexit copyright guidance is similarly broadly in line with stakeholders' expectations.

The UK’s continued membership of the main international treaties on copyright will ensure that the scope of protection for copyright works in the UK and for UK works abroad will remain largely unchanged.

Further, the EU's harmonising Directives and Regulations on copyright and related rights will be preserved in UK law as part of the acquis by the UK's EU Withdrawal Act 2018. The government will make adjustments under the powers of the Act to ensure the retained law can operate effectively.

However, the EU's cross-border copyright mechanisms extend only to member states of the EU or EEA. Accordingly, in a no deal Brexit scenario -

  • Sui generis database rights: There will be no obligation for EEA states to provide database rights to UK nationals, residents, and businesses. UK owners of UK database rights may find that their rights are unenforceable in the EEA. (EEA nationals, residents and businesses will continue to be able to enforce sui generis database right in the UK).
  • Portability of online content service: The Portability Regulation will cease to apply to UK nationals when they travel to the EU. This means online content service providers will not be required or able to offer cross-border access to UK consumers under the EU Regulation. UK consumers may see restrictions to their online content services when they temporarily visit the EU.
  • Country-of-origin principle for copyright clearance in satellite broadcasting: UK-based satellite broadcasters that currently rely on the country-of-origin copyright clearance rule when broadcasting into the EEA may need to clear copyright in each member state to which they broadcast.
  • Orphan works copyright exception: UK-based Cultural Heritage Institutions that make works available online in the EEA under the exception may be infringing copyright.
  • Collective management of copyright: UK Collective Management Organisations will not be able to mandate EEA Collective Management Organisations to provide multi-territorial licensing of the online rights in their musical works.
  • Cross-border transfer of accessible format copies of copyright works: The UK intends to ratify the Marrakesh Treaty after exit but ratification will not have taken place before 29 March 2019. Between exit and the point of ratification, businesses, organisations or individuals transferring accessible format copies between the EU and UK may not be able to rely on the EU Regulation.

Geographical indications

At present in the UK, food producers can obtain 'geographical indication' (GI) protection under the EU's quality schemes for agricultural and food products. There is no equivalent national regime in the UK.

The UK Government's 24 September 2018 Brexit 'geographical indications' guidance states that upon Brexit, the UK will set up its own World Trade Organization (WTO) Trade-Related Aspects of Intellectual Property Rights (TRIPs) compliant GI scheme which will broadly mirror the current regime and will be no more burdensome to producers. All existing UK holders of GI will be given the new UK GI automatically.

What next?

The Government's 24 September 2018 guidance will not be the last word on the implications of Brexit for intellectual property. In particular, in a no deal scenario, further details are expected to be released on the mechanisms for extraction of UK trademark and design registrations from EU registrations at the point of Brexit. Following a no deal Brexit, the Government could also be expected to consider and adjust the UK regimes for exhaustion, representation and subsistence of unregistered rights.

In the event of a deal being reached, the expected transition period will in any case preserve the status quo until the end of 2020.

We will keep you updated.

Read the original article on

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions