Brexit has finally happened (sort of), the withdrawal agreement has become law and we have now entered a transition period which will last at least until the end of this year. The passing of the withdrawal agreement has provided clarity on the position of EU intellectual property rights moving forward, allowing businesses to plan accordingly.
There are four main types of IPR; copyright, trade marks, designs and patents. Copyright and patents are not harmonised across the EU, though they can be enforced abroad through various international treaties, and so current rights in respect of these will not be affected. There are however EU-wide trade marks and design rights. It is these that will be adversely affected by Brexit and it is their position in respect of these which businesses need to consider.
Businesses which operate in the EU (or plan to in the future) are currently able to register an EU trade mark rather than a UK only mark. With an EU mark a business gets protection across all EU member states based on the use of their mark in one member state.
During the transition period EU marks will continue to provide protection in the UK. After the end of the transition period this changes and though businesses will retain their EU registrations these will no longer provide protection in the UK. The UK government has confirmed that it will automatically convert EU marks already registered in to UK trade marks at the end of the transition period.
If, at the end of the transition period, you are going through the process of obtaining an EU registration you will be required to file a separate application for a UK mark and pay the UK filing fees for doing this. Any UK application will however have the same filing date as the earlier EU application, if filed within 9 months of the end of the transition period, thus ensuring there is no gap in your protection. It is advisable therefore, if you are considering obtaining an EU mark, that you do this as soon as possible to have the best chance of the registration process being completed before the end of the transition period as this would save you the time and cost of having to refile in the UK.
If you have an EU mark that you currently only use in the UK these could become susceptible to revocation after the end of the transition period as they will no longer be used in the EU and lack of use is a reason for a trade mark to be revoked. It is important to review these marks and see if any positive steps need to be taken to ensure their validity moving forward.
The position for EU registered designs is the same as for trade marks. Those already registered will be automatically converted, those going through the registration process will need to be refiled in the UK.
UK designers currently also get an EU unregistered design right for their designs which protects the shape and other physical characteristics of the product and restrict what other people can do with the design across the EU. After Brexit UK companies and designers will no longer automatically qualify for this right losing valuable scope of protection, especially if they export to the EU.
The government has indicated that it will consider introducing an equivalent unregistered design right in the UK but this does not address the issue of scope of protection as this right would apply in the UK but not across the EU. Further, these rights arise in the territory where the product was first offered for sale. This means that unless businesses are able to offer products in the UK and EU simultaneously (which could be a technological and logistical nightmare) then they would have to choose which territory to market the product in first and so gain protection for. Regrettably the government has not proposed any solutions to this particular conundrum.
IPR’s are often a business’ most valuable asset and they need taking care of, particularly so in times of uncertainty. Baines Wilson has the specialist expertise to advise you on the implication of Brexit on your IPR’s and help you put in place a strategy to mitigate any disruption that is caused. If you would like advice on these do not hesitate to contact Adam (firstname.lastname@example.org) for a no obligation chat.