In the event of a "no-deal" Brexit, IP rights in the UK will be impacted. However, the UK has put in place various provisions to protect IP rights holders.
- Owners of European Union (EU) trade mark registrations, international trade mark registrations designating the EU and owners of design rights in the EU will receive new UK rights automatically after Brexit.
- Owners of EU trade mark and design applications that are pending at Brexit day will have nine months to apply for comparable UK rights.
- UK copyright and patent protection will not be immediately affected by Brexit.
It is currently unclear when the UK will leave the EU, and if so, on what terms.
At the time of writing, EU leaders have agreed in principle to extend Brexit until 31 January 2020—although the UK could leave before this deadline if a deal is approved by UK Parliament. The UK was due to leave the EU on 31 October 2019, but Prime Minister Johnson was required to request an extension after UK Parliament failed to agree a Brexit deal.
Owners of EU IP assets throughout the world have been anxious about what will happen to their UK IP rights after Brexit, particularly if a "no-deal" Brexit occurs and the UK leaves the EU without any separation agreement.
Fortunately, the UK government has provided for the continuation of IP protections in the UK through the European Union (Withdrawal) Act of 2018. However, in the longer term, the effects of Brexit will impact IP owners as there will be a necessity for parallel filings and renewals, for example.
Trade marks and Designs
Most anxieties have centred around the continuance of trade mark and design protection. If and when Brexit occurs, EU trade marks registrations (EUTM), international trade mark registrations designating the EU (IRs), registered Community designs (RCDs), unregistered Community designs (UCDs), and industrial design registrations designating the EU (IDRs) will continue to be valid in the remaining EU member jurisdictions, but they will no longer be valid in the UK.
However, under new UK statutes, the lost EU rights will be replaced by comparable rights in the UK. Owners of existing trade mark and design rights will not be charged a fee and will not be required to take any action, because these new UK rights will arise immediately and automatically after Brexit. Plus, the new rights will thereafter be treated as if they were applied for and obtained directly in the UK, but they will maintain the original EU application and registration dates, and, accordingly, all priority dates.
The new UK registrations will exist on the UK register where they will be identified by a specific prefix number; however, the owners of these new UK rights should keep in mind that the UK Intellectual Property Office (IPO) will not be issuing certificates of registration for the new registrations. Further, the owners of existing rights which become new UK registrations should also keep in mind that they will not have UK attorney representation for these assets unless they appoint such a representative. Our recommendation to such owners is to appoint a UK attorney who will act as legal representative to the new UK registrations once they are created on Brexit.
Similarly, owners of EU trade marks and designs which currently designate a UK representative, should appoint an EU representative before Brexit occurs.
Some owners of trade marks or designs may have pending EU applications at the time of Brexit. In such cases, the UK will allow the applicant to apply for a UK registration within nine months after Brexit, and, if the UK application maintains the details of the EU application, the UK application will retain the earlier filing date of the pending EU application. The new UK applications will then be evaluated under UK law, and UK IPO fees will apply.
Some owners of trade marks or designs may have renewals which will be due within either six months before or six months after Brexit. For the newly registered UK comparable rights, the UK IPO will not issue its standard renewal reminder in advance of the expiry date. It will send a renewal reminder on the actual data of expiry, or soon after, and owners will be given another six months from the date of the letter to renew the right.
Some trade mark or design asset owners may be parties to infringement proceedings which involve EUTMs, IRs, RCDs and IDRs and which may be pending in UK courts on Brexit day. After Brexit, these cases will continue to be heard by UK courts; however, any court order issued in such a pending case will only apply to the newly registered UK trade mark or design corresponding to an EUTM, IR, RCD or IDR.
Injunctions already in place on Brexit day will apply to the newly registered UK comparable rights if the injunction forbids activities in the UK which would infringe the corresponding EUTM, IR, RCD or IDR.
The same rule goes for licenses and security interests, which, if they concern an EUTM, IR, RCD or IDR and are in existence as of the day of Brexit, will be treated as applying to the corresponding new UK trade mark or design.
For those who do not want the new UK rights, the UK IPO will have an opt-out procedure in place. Opt-out requests can only be submitted after Brexit.
The patent system will be largely unaffected by Brexit for two main reasons. First, the UK will remain a member of both the European Patent Convention and the Paris Convention. Second, UK patents are granted either by the UK IPO or by the European Patent Office (which was established by the European Patent Convention), and these offices are not governed by the EU.
Accordingly, there will be no change to the patent application processes in Europe and in the UK. Both now and after Brexit, an applicant may file in the European Patent Office and request protection in the UK. Plus, any patent-related EU legislation will be incorporated into UK law through the European Union Withdrawal Act of 2018.
The validity of existing patents also will not change. Patents granted by the European Patent Office after Brexit will have the same validity in the UK as patents granted now, either by the European Patent Office or by UK IPO.
Like patent protection, UK copyright protection will be mostly unaffected by Brexit because the UK will remain a member of the Berne Convention. Works which qualify for UK copyright protection now will also qualify for copyright protection in the UK after Brexit.
In the months and years after Brexit, if and when it occurs, changes to EU copyright law (such as the implementation of the EU Copyright Directive) may not be implemented in the UK, and therefore UK copyright law may diverge from that current in the EU, but all such changes, if they occur, will not occur in the immediate future.
In the event of a "no-deal" Brexit, UK IP rights holders can take some comfort that the UK government has taken steps to ensure the continued protection of IP rights in the UK. However, in the longer term, the effects of Brexit are likely to be costly. In particular, it will likely lead to parallel filings and renewals. Businesses with IP rights in the UK should continue to monitor developments closely and prepare for all outcomes as the UK government's negotiations with the EU continue.
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.