European Union: Intellectual Property Rights In The EU Before And After Brexit

Last Updated: 26 January 2018
Article by Yordan Politov

The forthcoming withdrawal of the UK from the European Union (EU), the process of which was launched earlier this year, poses important questions related to the effect of the so-called EU intellectual property rights with unitary effect. These are, for example, the EU mark, the EU design, the EU protected geographical indications, SPCs and others. The main issue raised in relation to BREXIT is whether the acquired unitary rights will be exercised on the territory of the UK after its withdrawal from the EU and, if so, under what conditions. For instance, how and on what legal basis the rights acquired under EU law will be enforced and protected in the UK, how will the renewal of their protection (e.g. on every 10 years for trademarks) be regulated, the related payment of renewal fees and other specific questions.

In September 2017, the European Commission (EC) published on its official website (https://ec.europa.eu) its position paper and outlined the basic principles on the impact of BREXIT on intellectual property rights with unitary effect which will be proposed to UK in the framework of negotiation of the terms of its withdrawal from the Union. The UKIPO also published on its official website (https://www.gov.uk) the UK government's position on the subject.

After carefully analyzing the UKIPO's position, the lawyers from Penkov, Markov and Partners are on the opinion that it has some differences with the position of the EC, although in their entirety both are setting the common goal of finding the best possible solution in securing the rights and interests of the right-holders. 'Penkov, Markov and Partners' have in common with the EC's opinion by considering that the Commission's proposals protect the interests of the holders of IP rights with unitary effect in the EU to a greater extent.

It is of utmost importance to provide legal means by which the unitary rights already acquired within the EU will continue to have effect for the UK territory after BREXIT. Otherwise, the interests of the owners of EU trademarks, EU designs, UK SPCs and other intellectual property rights would be seriously harmed, assuming that unitary IP rights would simply cease to exist after BREXIT for the territory of UK. This would result in a situation where other entities, most often competitors of the right-holders, or just traders acting in bad-faith, and by doing so often infringing IP rights, would benefit from the created legal uncertainty. In such a scenario the right-holders will have to apply anew on a general basis for IP registrations in the UK, which, in some hypotheses such in the case of the registered design, would be even procedurally impossible due to the applicability of international agreements (Paris Convention, etc.).

The EC therefore proposes not to undermine the protection already provided with registered EU trademarks, EU designs, or for any other exclusive unitary right granted before BREXIT. Therefore, their holders to be able to enforce them in the UK after BREXIT as well, i.e. to continue to rely on those IP rights and to seek judicial and administrative protection equivalent to the rights already provided under the EU law. The EC suggests that the UK should undertake to adopt specific national legislation for this purpose, in particular, the automatic recognition in the United Kingdom of the existing (on the BREXIT date) intellectual property rights having unitary character within the EU. EC suggests that the automatic recognition should not be associated with additional costs to the holders of unitary rights, acquired before BREXIT, and that any administrative formalities associated with this should be kept to a strict minimum.

With regard to the pending applications and procedures on the BREXIT date, the EC recommends that applicants should have the right to claim priority from EU applications for intellectual property objects having unitary character in order to obtain equivalent national intellectual property rights in the UK.

Especially for the SPCs the EC suggests granting of legal protection for the territory of the UK equivalent to that provided under EU law for each UK certificate issued within the Union before BREXIT. When a SPC application has been filed with the relevant UK national authority before BREXIT in accordance with EU law and the procedure is not yet completed the applicant should be entitled to receive a SPC with effect in the UK.

Regarding the protection of databases (with copyright and rights related to copyright), the EC proposal is that once the databases have already been protected before BREXIT their producers and right holders, within the meaning of Directive 96/9, should continue to benefit from the same protection in the remaining 27 member states and in the UK after the withdrawal. In this respect the EC put arguments that the restriction provided in Art. 11, Para. 1 and Para. (2) of Directive 96/9, according to which only EU persons/ entities enjoy protection under the sui generis right should be waived in respect of natural and legal persons from the UK. Accordingly, the expectation is that the UK also shall not exclude rights of protection for databases of EU natural and legal persons on the basis of nationality or place of establishment.

On the other hand the position of the UKIPO is that while the UK is a member of the EU the EU registered trademarks and designs will continue to have effect on its territory. When the UK leaves the EU, the unitary IP rights will continue to be valid in the remaining EU member states. After BREXIT businesses in the UK will be able to acquire EU trademark or EU design rights for the 27 member states on a general basis, and for UK territory through national applications for marks or designs submitted to the UKIPO, or using the Madrid International Trademark System. As regards the international design registration system, the UK government declares its readiness to accede to the Hague Agreement in the future. Currently, the protection for registered design in the UK cannot yet be obtained under the international system.

The conclusion is that the final decision on the legal effect of BREXIT on the scope of EU intellectual property rights with unitary character will be political one and will be included in the withdrawal agreement signed between the Union and the UK.

In view of the ambiguity of future UK regulation by the time the withdrawal agreement enters into force it would be advisable for the business to utilize the Madrid International Trademark System in order to ensure timely the provision of legal protection of their trademarks in the UK in addition to the EU trademark system, if interested in doing so.

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 Mondaq.com.

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

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
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

Mondaq.com (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 www.mondaq.com

To Use Mondaq.com 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.

Disclaimer

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.

General

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