Brexit and IP-Rights – What will change?

The UK leaving the European Union will also have an impact on the currently registered IP rights in the EU.

The UK government has declared a transition period during until the end of 2020. Until the end of this transition period, there will not yet be any changes regarding any IP right. However, with a view to changes to come once the transition period reaches its end, we would like to provide you with an overview of the most important changes.

Brexit Impact on Trademarks

What are the key consequences of Brexit on EU trademarks?

  • There will not be any changes during the transition period, i.e. any trademark covering the EU will remain in force covering the UK territory.
  • Once the transition period has ended at the beginning of 2021 any EU trademark will automatically be granted a corresponding trademark in the UK trademark register. This national trademark registration will be entered with the corresponding filing date of the EU trademark or a priority date if applicable. The creating of the new UK trademark will not incur any costs for the trademark owner. In case of a pending EU application at the end of the transition period, the application can be altered into an UK application by paying the respective filing fees.

Do you need to take action now?

Principally: No. But there are circumstances in which we recommend to take action:

  • In the event of applying of an EU trademark these days, this should be done quickly in order to have it registered before the end of the transition period and to avoid the payment of the fees for a separate UK registration.
  • In case of any registered trademark licenses, settlements and the like depending on EU trademarks shall now be reviewed carefully and, if necessary be changed accordingly before the end of the transition period.

Important: Once the transition period has ended, it is no longer possible to rely on UK rights when filing an opposition against an EU trademark or to rely on an UK trademark to defend in case of a non-use cancellation proceeding or vice versa.

Brexit Impact on Domain names

It is not yet clear what impact the Brexit will have on the registration of domain names. It may be the case that non-EU members may not be able to renew or register their .eu domain names.

Brexit Impact on registered Designs

Registered community design rights: Similar changes as described above regarding the Trademark will be applied to registered community design registrations, i.e. by the end of the transition period, an EU design registration will be altered into a national UK registration.

Unregistered EU design rights: Rights which automatically protect certain designs of individual character from copying for three years from first disclosure are currently not provided under UK law. However, the UK government intends to introduce a supplemental design right, ensuring that all unregistered EU design rights remain protected in the UK.

Brexit Impact on Copyright and other related rights

There will not be any substantial changes regarding the copyright law. However, it is a fact that the UK government does not intend to implement the EU copyright directive. It is yet to be seen what the consequences for businesses will be. The EU law also knows a cross-boarder portability of digital contents, i.e. digital contents made available in one of the EU member state has to be made available to all. After Brexit this portability can no longer be applied to the UK.

The Brexit’s biggest impact, however, will be on the so-called sui generis rights, the most concerned will be database rights. If such a database right was created by an EEA national, resident or business this database is automatically protected across the EEA. After the transition period ends, EEA members can no longer be forced to recognise the database rights in the UK automatically which makes the pursuit of infringement a little more complicated.

Brexit Impact on Patents

Brexit will not affect existing European patents due to the fact that the European Patent Office is a separate entity to the EU. It is more likely that the Brexit will affect the proposed Unitary Patent and Unified Patent Court providing grant of a single patent offering EU-wide protection, which the UK is currently a member of and has ratified. It currently seems unlikely that the UK will remain a member state once the transition period is over.

Brexit Impact on Exhaustion of rights and Parallel Imports

The currently applied exhaustion of rights doctrine foresees that, if a product is placed on the market by or with the IP owner’s consent, the IP rights of that product are exhausted within the EEA. For instance, if you sell a product to someone in France the same product can be freely re-sold in the UK because the IP rights are exhausted. After the transition period has come to an end, IP rights in a product first placed in the market in the EEA will continue to be exhausted in the UK. If there exists no agreement to the contrary, putting a product in the market in the UK will not exhaust the IP owner’s rights in the EEA once the transition period has ended. As a consequence of this owners of UK IP rights will not be able to prevent parallel imports from the EEA, but on the other hand, owners of EEA IP rights will be able to prevent parallel imports from the UK. It is to be seen whether the UK government will continue to allow IP owners to rely on their IP rights to prevent parallel imports from outside the EEA, or if it will establish international exhaustion.

This overview has been established based on an article released by the UK law firm Harbottle&Lewis, which together with MME, is part of WorldIT Lawyers, a global alliance of firms focusing on IT and IP law. We thank our colleagues from the IP Team at Harbottle&Lewis for sharing their insights and expertise.

May 2020

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