Businesses with pan-European rights, i.e. EU trade mark registrations (EUTMs), Community design right registrations (CDRs), (unregistered) Community design rights, or database rights, should note the following:
Intellectual property rights: Brexit deal
If the Withdrawal Agreement and the Political Declaration are ratified before the 29 March 2019, proprietors of EUTMs or CDRs that were granted on or before that date, will automatically accrue equivalent intellectual property rights covering the UK jurisdiction only, without any additional administrative or financial burden. These will exist with the same filing and renewal periods as their original EU counterparts. Going forward, holders of these rights will have to pay renewal fees in respect of the registration as and when they arise (so effectively businesses will have two separate trade mark registrations, one for the UK and one for the EU, and will have to pay two sets of renewal fees.) Entities which are in the process of applying for EUTMs not due to be registered by the end of the transition period, will be given a grace period of nine months (from the end of 2020) to apply for an equivalent right in the UK.
The equivalent protection extends to other pan-European IPRs including sui generis database rights and unregistered community design rights which, on the assumption they arise before the end of the transition period, will automatically become enforceable rights with the same level of protection in the UK. Similarly, intellectual property rights which had been treated as exhausted in the EU and the UK under EU law, will continue to be viewed as such in both regimes after Brexit.
Intellectual property rights: Brexit no-deal
In the event that the UK leaves the EU without a ratified deal, the UK Government has released a series of technical guidance notes concerning what will happen to current EUTMs and design rights, patents, copyrights and exhausted IPRs. These make clear that rights in all registered EUTMs will vest into new equivalent UK only rights with effect from B-(rexit) Day. However, the Government's guidance implies that this will not be an automatic process, but obtainable with some 'minimal administrative burden.' It remains to be seen what practical steps businesses will need to take in this scenario, particularly with time running out. What they do confirm however, is that the nine month grace period for businesses which are in the process of applying for EUTMs, but have not completed the registration by 29 March 2019, will still apply (from that date.)
Exhausted intellectual property rights
The UK is currently part of a regional EEA exhaustion scheme which means that intellectual property rights are currently considered exhausted once they have been marketed anywhere in the EEA with the proprietor's permission. This means, for example, that re-sellers who re-sell branded goods which have already been placed with the trade mark owner's consent on the market in the EEA, further within the EEA, do not need to seek the permission of the trade mark owner in order to be able to do so; nor can they be sued for trade mark infringement.
If the Political Declaration and the Withdrawal Agreement are ratified, intellectual property rights which were treated under EU law as exhausted in the EU (including the UK) at the end of 2020, will continue to remain as such in both regimes. However after the transition period, both regimes will be able to establish their own rules, but what these will be with regards to the UK is unclear.
The Government has issued a technical note with regard to exhaustion, should the UK leave the EU with no deal, which confirms that the UK will, from 29 March 2019, continue to recognise the EEA regional exhaustion regime, so that there will be no change on the importation of goods into the UK from the EEA, providing a source of continuity for businesses in the medium term. However, the position with regard to goods travelling from the UK to the EEA is not so clear and has not yet been firmed up, so that rights protecting goods placed on the UK market initially, may not be recognised as having been exhausted by such placement. This would mean that businesses would have to check with EU rights holders first, before placing goods from the UK, onto the market in the EEA.
What should you be doing now?
- Proprietors of EU trade marks and Community design right registrations who wish to ensure protection of their brands and designs in the UK, should watch this space, particularly in a no deal scenario, to establish what further action is needed to take advantage of the Government's promise to provide equivalent protection in the UK.
- In some cases it may be appropriate to consider obtaining protection under national IP rights in other EU countries as well, particularly if they are important markets for your products/services.
- Consider whether references to the EU or EEA in territorial definitions for key IP licences may need to be amended to make it clear whether they are intended to include or exclude the UK after Brexit. See Brexit: Commercial Contracts.
- Re-sellers/distributors of goods who sell into the EEA, should watch out for a no deal scenario, and cannot assume that goods placed on the market in the UK can be re-sold within the EEA without the IP owner's consent.
Brexit and .eu Domain Names
It is worth noting that Brexit will also affect the ability of UK-based companies to own .eu domain names. The European body responsible for .eu domain names registrations, EURid, has announced in a recent notice that following the UK's withdrawal these may only be held by EU residents or businesses based in the EU.