Brexit: impacting on IP rights
In the latest of our series of collaborative articles which address key issues affecting the business community, Moon Consulting talks to European Patent & Trade Mark Attorneys, Haseltine Lake about the potential impact of Brexit on intellectual property rights.
Chris Morris, Partner at Haseltine Lake LLP
Brexit and Intellectual Property
Brexit is occupying the minds of businesses across diverse sectors and professions, with Executive Boards having to consider the potential impact withdrawal will have on all areas of their commercial activity.
As well as arguably conventional considerations such as contact negotiations and supply chain management, seemingly more esoteric issues are also raising their heads. One of these is the question of intellectual property.
What is IP?
Intellectual property is a term which covers a range of different rights, including patents, trade marks, designs and copyright. The rights most likely to be of interest to many businesses are the registered rights: patents, designs and trade marks.
IP rights are generally territorial in nature and scope, obtained on a country-by-country basis. Patents will be largely unaffected by whatever happens post-Brexit: while a European patent exists, it is not a creature of EU law, so the UK will still be part of that system in exactly the same way post-Brexit. This has been confirmed by the President of the European Patent Office, who issued a formal statement indicating that Brexit will have no effect on UK membership of the EPO. Therefore, European patent attorneys based in the UK will continue to be able to represent applicants before the EPO after Brexit.
In contrast, EU trade marks, or EUTMs (which cover all EU member states, including the UK) will be affected. An analogous right, the Registered Community Design (“RCD”, a right which protects the outward appearance of a product) also exists and will be similarly affected. The commentary and advice below applies in substantially the same way to RCDs.
EUTMs
EU trade marks have been very popular with businesses for good reason (providing a highly cost-effective means of obtaining protection EU-wide), and the UK’s scheduled departure from the EU in 2019 will significantly affect the trade mark landscape. Subject to a special, trade mark-specific deal (highly unlikely) EUTMs will no longer cover the UK.
What is the current situation?
For now nothing has changed, EUTMs still include the UK, including new filings. Once the UK leaves, that will no longer be the case: if the Withdrawal Agreement is ratified this effect will not kick in until 31 December 2020.
How will existing EU trade marks be protected in the UK?
All EUTMs and RCDs which are already registered on the date the UK exits the EU will be cloned onto the register maintained by the UK Intellectual Property Office (“UKIPO”). After Brexit, therefore, an owner of an EUTM or RCD will own two registrations in place of one, covering the EU and UK respectively and with the same filing and renewal dates.
These cloned UK registered rights will be granted automatically and free of charge, subject to the proposed Withdrawal Agreement between the EU and the UK government being ratified, i.e. so long as there is not a hard Brexit. This position was stated in parliament on 19 July 2018 and subsequently confirmed by the UKIPO.
If there was no deal with the EU it is very probable that continuity of protection could still be maintained for EUTMs and RCDs, but the exact arrangement has not been confirmed.
Further IP-related provisions proposed in the Withdrawal Agreement include these
Pending applications for EUTMs and RCDs which are in process on exit day can be re-filed in the UK within 9 months. They will keep the original EU filing date.
A UK trade mark registration newly created out of an EUTM will not on exit day be liable to cancellation on non-use grounds if the mark had not been used in the UK before the end of the transition period.
If the Withdrawal Agreement is ratified, there should not be substantive changes to the IP landscape during the transitional period which is scheduled to end on 31 December 2020.
Key recommendations for now
Businesses applying for European Union trade marks (“EUTMs”) from September 2018 onwards would be well advised to consider also filing in the UK if this is a significant market. This should maximise the prospect, in the event of a non-deal exit from the EU in March 2019, of already having in place a registered trade mark which is enforceable in the UK.
Filing parallel applications for European Union registered designs (“RCDs”) into the UK can be deferred for the time being. This is because an RCD filed this year will very likely have been registered by March 2019: registrations typically issue within two weeks of filing as there is no substantive examination at the EU Intellectual Property Office (“EUIPO”) and no provision for third parties to oppose registration.
This information note has been produced in conjunction with Chris Morris, Partner at Haseltine Lake LLP, European Patent & Trade Mark Attorneys. For more information please contact Haseltine Lake on +44 (0) 117 910 3200. https://www.haseltinelake.com//.
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