AL: News

Brexit – Deal or no-deal?

Friday 12 October 2018

At 11pm GMT on 29 March 2019, the United Kingdom is scheduled to leave the membership of the European Union. This note considers the latest guidance issued by the UK government in relation to intellectual property rights and outlines how businesses can prepare to ensure the minimum level of disruption.

Broadly speaking, the UK government’s current position is that EU rights which apply to the UK will be maintained in the UK after March 2019. This aligns with the purpose of the EU Withdrawal Act 2018, which is to retain EU law, and therefore the status quo, as far as possible after March 2019.

Whilst we are told that a deal is expected, the UK government has released notices on what will be the default position if there is “no deal”[1].

Current proposal if there is no deal

Patents

Patents are largely unaffected by Brexit. There is no pan-EU patent and so Appleyard Lees will continue to file European patents whether there is a deal or no deal.

UK law will continue to operate as it does currently in relation to biotechnological patents, compulsory licensing arrangements and exceptions from infringement for the testing of pharmaceutical products. The exceptions where change is expected are as follows:

  • supplementary protection certificates (SPCs), for pharmaceutical products and agrochemicals. The UK is likely to introduce its own regime.;
  • the scope of protection for biotechnological inventions;
  • compulsory licensing regimes for overlapping biotechnological patents, plant variety rights and UK manufacture of a patented medicine for export to a country with a public health need; and
  • allowance for certain studies, trials and tests to be carried out without patent infringement.

Registered trade marks and designs

Appleyard Lees will continue to file EU Trade Marks (EUTMs) and registered Community designs (RCDs).

Applications for EUTMs and RCDs which are pending on 29 March 2019, will be allowed until 29 December 2019 to apply for equivalent UK national rights and retain the date of the EU application and any associated priority claims.

EUTMs and RCDs which are registered before 29 March 2019 will continue to be recognised in the UK through an equivalent right. The trade mark or design will then be treated as if it had been applied for and registered under UK law. Right holders taking this step will need to meet the cost of refiling the application in accordance with the UK application fee structure.

There is currently no guarantee that EU designations of WIPO trade marks and Hague designs will be recognised. The UK government is working with WIPO to try and achieve the same recognition as applications filed directly with the EUIPO.

Disputes relating to EUTMs and RCDs in the UK courts are expected to continue during a transitional phase but no details have yet been confirmed.

Unregistered Community Designs

Unregistered Community Design rights (UCDs) which exist at 29 March 2019 will continue to be protected and enforceable in the UK. Post-29 March 2019, UCDs will continue to exist for designs which are first disclosed in the UK.

Copyright

Copyright is largely unaffected. Only aspects of copyright specifically linked to EU law are potentially affected. In particular:

  • there will no longer be enhanced protection for database rights. Databases will still be protected to some extent under other, non-EU copyright law;
  • UK CMOs won’t be able to authorise EU-wide licensing;
  • UK-based satellite broadcasters may need to clear copyright in each EU member state where they broadcast;
  • there will no longer be EU-wide portability of content e.g. Netflix content will no longer be accessible when outside the UK;
  • use of “orphan” copyright works may no longer be permitted; and
  • immediately after 29 March 2019, the exceptions for providing accessible format copies of copyright works won’t apply in the UK as the UK won’t yet have ratified the Marrakesh Treaty. However, the UK does intend to ratify this treaty post-Brexit.

Geographical Indications

Agricultural products and foodstuffs that have a particular origin, manufacturing process or qualities can be protected as geographical indications (GIs) in the UK, which are recognised in the EU (e.g. Cornish pasty and Yorkshire Wensleydale cheese).

UK GIs are enforceable in the EU and in countries with which the EU has a bilateral agreement to recognise EU GIs.

The UK intends to set up its own GI scheme, which broadly mirrors the current EU regime. It is also currently seeking to replicate the current EU agreements with third countries, to ensure the continued protection and recognition of UK GIs.

In the event of no deal, UK producers of products protected by GIs will need to change packaging as there will be a new UK GI logo.

Next steps for rights holders

Patents

Largely, it is business as usual for patent holders. Businesses concerned about the exceptions and those involved in licensing and manufacturing should seek advice.

Registered trade marks and designs

Registered EUTMs and RCDs are expected to convert automatically to UK rights at 11pm on 29 March 2019. Applications for pending EUTMs and RCDs on 29 March 2019 must be filed in the UK seeking equivalent rights by 29 December 2019.

For peace of mind and guaranteed protection in advance of 29 March 2019, brand owners may wish to consider filing UK applications now.

Unregistered Community designs and copyright

No action can be taken by right holders to ensure there is continuation of protection for existing rights. Anyone concerned should seek advice.

Geographical Indications

UK producers with UK GI status should apply to register EU collective or certification trade marks.

[1] For the full government guidance see the links below:

  • https://www.gov.uk/government/publications/patents-if-theres-no-brexit-deal/patents-if-theres-no-brexit-deal
  • https://www.gov.uk/government/publications/trade-marks-and-designs-if-theres-no-brexit-deal/trade-marks-and-designs-if-theres-no-brexit-deal
  • https://www.gov.uk/government/publications/copyright-if-theres-no-brexit-deal/copyright-if-theres-no-brexit-deal
  • https://www.gov.uk/government/publications/protecting-geographical-food-and-drink-names-if-theres-no-brexit-deal/producing-food-products-protected-by-a-geographical-indication-if-theres-no-brexit-deal

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