Impact of Brexit on Intellectual Property

General Impact

Do I need to take specific positive action as a result of Brexit (now that the implementation period has ended)?

Yes, if you are one of the following and you wish your rights to be covered in the UK as well as the EU:

• Pending applicant for a EU TM right, click here.
• Pending international applicant for a Design right designating the EU, click here.
• Pending applicant for a Community Registered Design Right, click here.
• Pending international applicant for a Design right designating the EU, click here.
• Holder of an application for action under the Customs Regulation which covers the UK and EU Member States, click here.

What are the main changes to be aware of?

The following key changes should be noted

• EU TM right will not cover the UK but an equivalent UK right (called a “comparable trade mark” ) will be automatically created. The EU TM right (called a corresponding EU TM) will continue to cover 27 EU Member States.
• EU design right (both Registered and Unregistered Community Design rights) will not cover the UK but an equivalent UK right (called a “re-registered design right” or a “UK continuing unregistered design right”) will be automatically created. Further, a new UK unregistered design right called a “supplementary unregistered design right”, which provides the same protection as the Unregistered Community Design Right but covering only UK, will be made available.
• Creation of an Unregistered Community Design right will require first disclosure in the EU, and the creation of an equivalent right in the UK will require first disclosure in the UK.
• EU IP rights holders can prevent importation of goods lawfully placed on the market in the UK as EU IP rights are not deemed to have been exhausted in the UK. However, goods lawfully placed on the market in the EU can continue to be imported into the UK owing to exhaustion of relevant IP rights under UK law.
• Non-EU businesses will no longer be entitled to claim EU database rights in respect of databases created after 31 December 2020.
• Non-EU businesses are no longer entitled to be a registrant of an .eu domain
• UK Courts will no longer refer cases to the CJEU

The following future possibilities also ought to be borne in mind:

• IP laws in the EU and UK may diverge.
• The UPC system may be implemented but, in this event, it will not cover the UK.

How might intellectual property (IP) rights be affected now that the UK has withdrawn from the EU and the implementation period has ended? What impact does the Trade and Co-operation Agreement of 24 December 2020, between the UK and the EU have on IP?

• The Trade and Co-operation Agreement has very little impact on IP rights. It provides minimum measures for IP protection with scope for implementing stricter measures. The minimum measures have already been implemented in both the UK and EU.
• Changes in EU law will now not automatically be incorporated into UK law and changes may be made to UK law which lead to divergence with the EU.
• The UK has made amendments to law relating to intellectual property rights to ensure continuity after the implementation period as far as possible. Even so, not all continuity mechanisms will be automatic and so further action will be required by IP rights holders.

How would the exhaustion of IP right work now that the UK has withdrawn from the EU? Can IP right holders prevent the importation of cheaper goods coming from the EU into the UK and vice versa?

The single market within the EEA (which now does not include the UK) means that goods placed lawfully in that market are allowed to circulate freely in the EEA. Now that the UK has left the single market, exhaustion rules apply in the following ways:

• Goods which have been lawfully placed within the EEA after 31 December 2020 may be allowed to continue to be freely imported into the UK (subject to the goods meeting relevant regulatory requirements if any).
• Rights holders can prevent importation of goods lawfully placed in the UK after 31 December 2020, into the EEA on the basis of IP rights (in other words, IP rights covering EU member states are not deemed to be exhausted when the goods are lawfully placed in the UK).

Whether we can expect large volumes of parallel importation from the EU into the UK would depend on the extent of price differences between the UK and the relevant EU Member State. There is also a possibility that the UK government decides on a different exhaustion regime in the future.

What will happen to IP in the UK?

Patent right

There is no action to take with regard to patent rights. The current system of national patent protection obtained through the UK Intellectual Property Office (UKIPO) or the European Patent Office (this is not an EU institution) remains unchanged.

A European patent regime, called the Unified Patent Court, is being planned, enabling proprietors of inventions to apply for a single, pan-European Unitary Patent (UP) covering most of Europe, and with a single Unified Patent Court (UPC) to hear and determine patent disputes on a pan-European basis. The UK will not form part of the UPC system and a UP will not cover the UK.

Supplementary Protection Certificates (SPC)

An SPC is a national right and separate applications must be made in each European territory. Even now, after the implementation period, existing rights and pending applications will be unaffected.

The Patents (Amendment) (EU Exit) Regulations (“the Patents Regulations”) is in place, which is designed to maintain the current systems and processes as far as possible. The 6 month-extension of SPC protection period to which patent or SPC holders are entitled for compliance with paediatric investigation plans under the EU regime is designed to be available in the UK also.

From 1 January 2021, an SPC application can be filed based on any marketing authorisation which allows the patented product to be placed on the market in any part of the UK. The application process, evidence and timelines for the UK are expected to remain the same.

Prior to the UK’s withdrawal from the EU, the SPC protection period amounted to the period between the patent filing date and the first marketing authorisation which allowed the product to be first sold on the market in the EEA, subject to a 5 year cap. Now, as far as UK law is concerned, the SPC protection period would be equivalent to the time between the patent filing date and the first marketing authorisation which allowed the product to be sold on the market in the EEA or the UK, subject to a 5 year cap.

The SPC manufacturing waiver which came into force 1 July 2019 will continue to apply.

Trade Mark right

The national trade mark (TM) system whereby UK trade marks are obtained via the UKIPO is unchanged.

EU Trade Mark rights

If you require representation at the EU IPO, you will require a EU qualified representative unless the matter is a pre-31 December 2020on-going matter.. Norton Rose Fulbright have EU qualified professionals who can continue to represent clients.

The EU TM right will no longer cover the UK. However, an equivalent cloned UK “comparable trade mark” will have been automatically created on the UK trade marks register, free of charge, leaving behind an EU TM covering 27 member states (called a corresponding EU TM).

The comparable trade mark:

• Will have been created automatically, without re-examination and free of charge;
• Will be treated as if it had been applied for and registered under UK law;
• Will have its filing, priority, UK seniority and renewal dates maintained; and
• Will not be liable to revocation on the ground that its corresponding EU TM had not been put into genuine use in the UK within the five years before 1 January 2021. Thereafter, the continuing validity of the comparable trade mark will be dependent on use in the UK.

Separate renewal fee will be due for (UK) comparable trade mark rights.

Any existing pan-European injunction granted based on a EU Trade Mark right will in effect continue to apply in the UK as the injunction will be treated as if it applies to the comparable trade mark.

Pending EU Trade Mark applications

Pending EU trade mark applications will have no effect for the UK. The applicant will need to re-file in the UK, paying the relevant fees, and will have a window of nine months (by 30 September 2021) for doing so in order to maintain the filing, priority and UK seniority dates recorded against the corresponding EU application. The EU application will go forward covering 27 member states.

International Trade Marks (protected via the Madrid protocol) designating the EU

The above provisions will apply to international trade mark registrations protected in the EU. The EU designation no longer has effect in the UK but a comparable trade mark will have been created in respect of every international registration protected in the EU before 1 January 2021.

Holders of an international registration designating the EU that the EUIPO has neither refused nor protected on 1 January 2021, will have nine months (by 30 September 2021) to apply for a UK registration with the UKIPO which preserves the initial date of designation for the EU application. The same applies for holders whose international registration or subsequent designation of the EU, as the case may be, is inscribed in the International Register with a date earlier than January 1, 2021. In this case, the said nine-month period will be counted from the date on which the international registration or subsequent designation of the EU is inscribed in the International Register.

UK entities may file using the Madrid Protocol through the UKIPO as the Office of origin, but not through the EUIPO.

Design rights

The national system of UK Registered Designs obtained through the UKIPO and the UK unregistered design right is unchanged. The UK unregistered design law will also remain unchanged.

Registered Community Design rights

If you own an existing right, you do not need to do anything. Registered Community Designs (RCDs) no longer has any effect in the UK. At that point, an equivalent cloned re-registered UK Design will be automatically created on the UK register, free of charge, leaving behind an RCD covering 27 member states.

The re-registered design will:

• be created automatically, without re-examination and free of charge;
• be treated as if it had been applied for and registered under UK law; and
• have its filing, priority and renewal dates maintained.

Separate renewal fee will be due for (UK) re-registered design rights.

Any existing pan-European injunction granted based on a Community Design right will in effect continue to apply in the UK as the injunction will be treated as if it applies to the re-registered Design Right.

Pending Community Design applications

Pending RCDs will not cover the UK. The applicant will need to re-file in the UK, paying the relevant fees, and will have a window of nine months for doing so in order to maintain the filing and priority dates recorded against the corresponding EU application. The EU application will go forward covering 27 member states.

Unregistered Community Design rights

Unregistered Community Designs (UCDs) which exist as at the end of the implementation period will continue to be protected and be enforceable in the UK as a UK continuing unregistered design for the remaining period of protection of the right.

Further, a new UK unregistered design right called a Supplementary Unregistered Design (SUD) will be made available. The UK’s objective is to ensure that the full range of design protection provided in the UK prior to Brexit will remain available. This right is intended to mirror the characteristics of the UCD right. SUD will be established by first disclosure in the UK or another qualifying country (which does not include the EU). Applying the logic, creators of designs may plan to disclose their new designs in the UK and the EU simultaneously because the first disclosure in one territory may destroy the novelty in the design in respect of the design right for the other territory.

International designs (protected via the Hague system) designating the EU

The above provisions will apply to international design registrations protected in the EU. The EU designation will now not have any effect in the UK. According to the government guidelines, IPO and WIPO are discussing options that will ensure rights holders do not lose protection in the UK for their internationally protected EU designations on 1 January 2021.

Copyright

Although copyright law per se is not harmonised, the rules governing the way in which copyright protected works can be exploited in certain contexts are governed by EU law (such as the Software Directive and the InfoSoc Directive), and these EU laws have already been implemented into UK legislation. Future EU law will not be incorporated into UK. For example, there is no plan for the UK to implement the Digital Single Market Directive (sometimes called the EU Copyright Directive).

Rights relating to database

The EU Database Directive provides for two forms of legal protection of databases:

• Database copyright: This right subsists in a database where the selection or arrangement of the contents of the database constitutes the author’s own intellectual creation.
• Sui generis (ie: unique) database right: This right subsists in a database where there has been substantial investment in obtaining, verifying or presenting the contents of that database.

The EU Database Directive has qualifying provisions which confer sui generis database rights only on:

• makers of the database or right holders who are nationals of an EEA member state or who have their habitual residence in the territory of the EEA; or
• companies and firms formed in accordance with the law of an EEA member state and having their registered office, central administration or principal place of business within the EEA; however, where such a company or firm has only its registered office in the EEA, its operations must be genuinely linked on an ongoing basis with the economy of an EEA member state.

Database rights that are existing before 1 January 2021 continue to exist in the UK and EEA for the rest of their duration (whether held by UK or EEA persons or businesses). However, UK nationals, residents or businesses which do not qualify as described above will no longer be conferred or hold any new database rights in the EU. UK legislation will be amended so that only UK nationals, residents or businesses are eligible for new database rights in the UK. Separate contractual rights may help limit any loss of database rights. Note that there is no qualifying provision for copyright in the database.

Rights in Trade Secrets and Confidential Information

No change is anticipated in the area of trade secrets/confidential information. The UK historically has had a robust common law of confidentiality which will remain in force. Furthermore, the EU Trade Secrets Directive (Directive (EU) 2016/943) was implemented in the UK per the Trade Secrets (Enforcement, etc.) Regulations 2018 (SI 2018/597), which will remain in effect.

EU domain name

The .eu Top Level Domain will no longer apply to the UK. Thus, undertakings and organisations that are established in the UK but not in the EU and natural persons who reside in the UK and are not an EU citizen are no longer be eligible to register .eu domain names or, if they are already .eu registrants, to renew .eu domain names registered previously. Domain names belonging to a proprietor who is not eligible may now be revoked.

Agreements between the Registrar and the registrant of a .eu domain name cannot designate UK law as applicable law nor can they designate a dispute-resolution body (unless selected by the .eu Top Level Domain Registry pursuant to Article 23 of Commission Regulation (EC) 874/2004), an arbitration court or a court located outside the EU.

UK rights cannot now be invoked in revocation procedures for speculative and abusive registration.

Customs Enforcement regime

The EU Customs Enforcement regime will no longer cover the UK. Existing application for action (AFA) under the Customs Regulation made through another EU member state will be valid but will no longer cover the UK, and so a new application will need to be made for the UK. Existing AFA originally made in the UK with coverage extending to EU member states will now only cover the UK, and so a new application will need to be made through the custom authorities of one of the EU member states.