Regardless of whether you consider Brexit to be the greatest thing since blue passports, a national act of self-harm or your views fall somewhere in between, the UK has now left the European Union, with the transition period ending on 31st December 2020 (exit day).
The impact of Brexit will likely be felt for some time within the business community; with most (if not all) businesses owning and or making use of IP, it is important for those businesses to consider how Brexit will affect their IP.
So what are the repercussions for the IP rights that UK businesses have enjoyed because of our (erstwhile) membership of the EU? Ultimately, the answer depends on the outcome of any deal reached with the EU but based on the provisions of the Withdrawal Agreement, businesses should bear the following in mind.
Existing EU rights
The UK’s participation in the European Patent regime is unaffected by our withdrawal from Europe. Consequently, filing, prosecution and enforcement of European Patents designating the UK is unchanged.
However, EU trade marks and designs rights (which provide protection across the whole of the EU) are affected by Brexit.
Where EU trade marks and designs have been registered before exit day, the position is straightforward; the UK Intellectual Property Office (UK IPO) will automatically create comparable IP rights in the UK, with filing and (if relevant) priority dates mirroring those of the original registration. The EU trade marks/design rights will remain enforceable in the countries that remain in the European Union.
However, if an application for registration is pending at exit date, the applicant will have to make a further application to the UK IPO for a corresponding right, within nine months of exit day, so as to take advantage of the earlier filing or priority date of the EU application. If the application is not made within that nine month grace period, an entirely new application to the UK IPO must be made, thereby losing the filing date of the EU application.
Renewal fees
In addition to this administrative burden, businesses should also bear in mind the fact that there will now be two sets of renewal fees due for those rights, so as to maintain the same level of protection – one fee payable to the EU IPO, the other to the UK IPO.
For businesses with extensive trade mark or design portfolios, these additional costs will likely be substantial. Renewal may therefore be the time for a business to consider their portfolio carefully, so as to renew only what is still needed by the business.
Design rights
Registered rights are only part of the story. Until exit day, businesses continue to benefit from what is perhaps a lesser known but very useful right – unregistered community design (UCD).
UCDs prevent a design from being copied, without the need to register that right. The protection provided is for a relatively short duration (three years) but it protects the contours, lines, materials, shape, ornamentation texture and colour of a design. Whilst there is a UK unregistered design right, this protects only contours and shape. The level of protection currently offered in the UK is, therefore, considerably lesser than by UCD.
UCDs in existence as at exit day will be recognised in the UK after that date, for the duration of their unexpired three year period. Further, the Withdrawal Agreement provides for the creation of a new right that will mirror the protection given by the UCD, known as a supplementary unregistered design right (SUDR).
However, because of the way that both UCDs and SUDRs are established (first disclosure) herein lies a pitfall. If, post exit day, disclosure takes place in the UK, SUDR will be established, but this will not be enforceable in the EU.
Plainly this risks the copying of such designs, outside of the UK, with limited (if any) ability for the designer to prevent the same. The flip side is that, if disclosure of the design first takes place in one of the remaining EU member states, SUDR will not be established by that disclosure. Further, that prior disclosure is likely to destroy any novelty claim to the design in the UK, thereby preventing SUDR from being claimed.
Summary
The above represents a whistle-stop tour of how Brexit will likely impact a number of the registered and unregistered IP rights that we have enjoyed as a result of our membership of the EU.
Pending resolution of the UK/EU talks, the situation remains subject to change. However, what is clear is that businesses should remain vigilant, seek registration where possible (and economically feasible) and carefully consider how these changes will affect their IP strategy.
How can Nelsons help?
Emma Ward is a Partner in our Dispute Resolution team, specialising in contentious intellectual property matters.
For more information on the subjects discussed in this article, please contact Emma on 0800 024 1976 or via our online form, and she will be happy to assist.