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Planning for “No Deal” – IP Rights after Brexit


25th Sep 2018

On 24 September 2018, the UK Government released several notices setting out the UK’s position on how existing intellectual property (IP) rights will be treated in the event of a “No Deal” exit from the European Union.

These notices provide guidance on what the UK Government plans to do about IP rights based on EU law, should the UK not agree terms of a Brexit deal with the EU prior to the UK’s planned departure from the EU in March 2019.

In short, if the UK leaves the EU without a deal in March 2019, granted European Union trade marks, registered designs, and unregistered designs (which prior to Brexit would cover all 28 EU member states including the UK) will automatically be converted into:

  • an IP right covering the 27 remaining EU states (the “EU27”); and
  • a similar IP right enforceable in the UK.

Importantly, however, this would apply to granted rights only. For pending European Union trade marks or registered designs that have been applied for, but not granted, prior to the UK’s withdrawal, the applicants would have to actively re-file their application within 9 months to apply for an equivalent IP right in the UK.

The Government’s position generally confirms the sort of transitional provisions which have been expected since Britain’s vote to leave the EU.

The Government states that a “no deal” scenario remains unlikely, and explains that the publication of these notices does not reflect an increased likelihood of a “no deal” outcome.

The UK Government’s Position in More Detail

European Union Trade Marks, Registered Community Designs, Unregistered Community Designs

Granted Rights – “The government will ensure that the property rights in all existing registered EU trade marks and registered Community designs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registered in the UK.”; “right holders will be notified that a new UK right has been granted. Any business, organisation or individual that may not want to receive a new comparable UK registered trade mark or design will be able to opt out”

Pending Applications – “Applicants with a pending application for an EU trade mark or a registered Community design at the point of exit will be able to refile, within nine months from the date of exit, under the same terms for a UK equivalent right, retaining the EU application date for priority purposes.”

Supplementary Protection Certificates (SPCs)

the EU’s legislation on supplementary protection certificates will be kept in UK law. This law, along with the existing supporting provisions in UK patents legislation, will form the UK’s own supplementary protection certificate regime on exit.”

Exhaustion of Rights

“Intellectual property-protected goods placed on the EEA market by, or with the consent of, the right holder after the UK has exited the EU will continue to be considered exhausted in the UK. This means that parallel imports of these goods from the EEA to the UK will be able to continue unaffected.

Goods placed on the UK market by or with the consent of the right holder after the UK has exited the EU will not however be considered exhausted in the EEA. This means that businesses exporting these goods from the UK to the EEA might need the right holder’s consent.”

Copyright

“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.

The EU cross-border copyright mechanisms extend only to member states of the EU or EEA. On exit, the UK will be treated by the EU and EEA as a third country and the reciprocal element of these mechanisms will cease to apply to the UK.”

And a note on Patents

European Patents are granted by the European Patent Office, which is not an EU body. Therefore, the existing European Patent (EPC) system will be unaffected by Brexit.

As for the expected European Unitary Patent system, which is based on EU law, the ratification process is still ongoing. The start date of the Unitary Patent System is not yet clear, and it is not clear whether, should the system come into force, the UK will be a part of it after a no-deal Brexit. The Government notice mentions several possible outcomes, and states that “The UK will explore whether it would be possible to remain within the Unified Patent Court and unitary patent systems in a ‘no deal’ scenario”.

The UK Government’s notices can be read in full here: trade marks & designs; SPCs and patents; copyright; exhaustion of IP rights.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

 

Author
Gavin Dundas
Associate
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Would you like to know more? You can talk to Gavin Dundas who will be able to help. Call +44 (0)1223 360 350

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