With less than six months to go before the United Kingdom leaves the European Union, and in the absence of an agreement on the withdrawal, the UK government has published several notices with guidance for intellectual property right-holders describing what they should expect in the event of a so-called “no-deal Brexit” for trademarks, designs, copyrights, geographical indications, patents, supplementary protection certificates and plant variety rights.
On 29 March 2019 the United Kingdom (UK) will cease to be a member state of the European union (EU).
With less to six months left before that date, and without an agreement between the UK government and the EU concerning the conditions of the UK’s withdrawal, the scenario in which a separation takes place with no agreement at all in place is beginning to look more realistic and is being called “no-deal Brexit”.
Since most provisions of law concerning intellectual property are harmonised in all EU member states, and some very frequently used intellectual property rights (such as the EU trademark) are valid in the territory of the EU as a whole, the possibility of a “no-deal Brexit” poses the problem for intellectual property right-holders of how to secure protection in the UK of a trademark, design or other intellectual property right after Brexit.
The UK government has recently provided (partial) answers through six notices on the consequences of a no-deal Brexit in six areas of intellectual property:
Each one of the notices stresses that negotiations between the UK and EU are still under way and that a no-deal Brexit is not likely to happen.
In the event of a no-deal Brexit, the general intention of the UK government is to put in place mechanisms, that will be automatic in some cases, to ensure that the majority of EU-wide intellectual property rights will continue to be protected in the UK after Brexit and that national laws harmonised with EU directives and regulations are preserved.
It is important to keep in mind, however, that such guidance refers to a hypothetical situation, and consists merely of a list of solutions that the UK government intends to enact in the event of a withdrawal from the EU with no agreement.
The notices therefore do not exhaust the issue of how to ensure continued protection to intellectual property rights in the UK in the event of a no-deal Brexit.
Summarised below are the main points of the notices published between 24 September and 12 October 2018.
A no-deal Brexit will bring no changes for European patents with validity in the UK; supplementary protection certificates for pharmaceutical patents and licenses will continue to be valid automatically.
European patents are governed by the European patent conventions, which is not a treaty of the EU. Therefore the UK’s withdrawal from the EU will have no effect on European patents: European patents that are valid in the UK will maintain validity in the UK after a no-deal Brexit.
Patents, supplementary protection certificates and licenses in force in the United Kingdom will automatically continue to be valid after a no-deal Brexit (no action required from the right-holder).
Moreover, as set forth in the “EU Withdrawal Act 2018”, the UK will preserve all provisions of law deriving from harmonisation with EU laws in the following areas: supplementary protection certificates for patented pharmaceutical and agrochemical products, patenting of biotechnological inventions, compulsory licenses for patented pharmaceuticals and for patents concerning plant variety rights.
Pending applications for patents and supplementary protection certificates will continue to be processed as usual and it will be possible to file new applications.
The unitary patent system will come into force only after the Unified Patent Court (UPC) becomes operational. Should the UPC become operational before March 2019 and should the United Kingdom have to withdraw from the UPC and unitary patent system:
- Any existing unitary patents will automatically be protected by a UK right (no action required from the right-holder).
- Provision will be made regarding the status of any pending cases before the UPC at the date of Brexit.
- UK, EU and third country businesses seeking protection in the UK for their inventions will need to use national patents (including patents available from the non-EU European Patent Office) and the UK court system.
It is unlikely, however, that the UPC will come into force before March 2019.
European Union trademarks and Community designs
European Union trademarks and Community designs will be automatically receive protection in the UK if they are already registered at the date of Brexit; owners of pending applications will have 9 months to file a new national application and maintain the date of the EU application.
In the event of a no-deal Brexit, all registered EU trademarks and registered Community designs will continue to be protected in the UK as follows:
- Protection in the UK of registered EU trademarks and registered Community designs will be granted with a new equivalent national UK right, to be granted “with minimal administrative burden”.
- Right-holders will be notified that a new UK right has been granted. Those not wishing to receive a new comparable UK registered trade mark or design will be able to opt out.
- Provision will be made regarding the status of legal disputes involving EU trade marks or registered Community designs which are ongoing before the UK courts and more information will be provided on this before the point at which the UK exits the EU.
- Applicants with a pending application for an EU trade mark or a registered Community design at the point of exit will be able to refile, within nine months from the date of exit, under the same terms for a UK equivalent right, retaining the EU application date for priority purposes.
- New applications will be eligible to be filed in the UK for UK trade marks and registered designs (as they are now).
The UK government states that is working, including with the World Intellectual Property Organisation, to provide for continued protection in the UK from exit day onwards of registered trade marks and registered designs filed through the Madrid and Hague systems which designate the EU.
Unregistered Community designs
All unregistered Community designs which exist at the point that the UK leaves the EU will continue to be protected and enforceable in the UK for the remaining period of protection of the right (no action required from the right-holder).
In addition to this, the UK will create a new unregistered design right in UK law, called “supplementary unregistered design” which mirrors the characteristics of the unregistered Community design.
Therefore designs which are disclosed after the UK exits the EU will also be protected in the UK under the current terms of the unregistered Community design.
Provision will be made regarding the status of legal disputes involving unregistered Community designs which are ongoing before UK courts.
The UK will continue to be a member of main international treaties on copyright after Brexit. That will ensure that the scope of protection for copyright works in the UK and for UK works abroad will remain largely unchanged.
As set forth in the “EU Withdrawal Act 2018”, the UK will preserve all provisions of law deriving from harmonisation with EU laws.
Guidance on copyright in the event of a no-deal Brexit also includes warnings concerning possible problems in the areas of database rights, satellite broadcasting, orphan works, collective management of copyrights and cross-border transfer of accessible format copies of copyright works.
For the moment at least, there seem to be no plans for the automatic protection of geographical indications in the UK after withdrawal. Right owners seeking protection in the UK will have to file for registration under the new national scheme for protection of geographical indications, yet to be established.
As previously announced in the Brexit White Paper published by the UK government on 12 July 2018, the new guidance confirms the government’s intention to create a national system for the protection of geographical indications (GIs), compatible with the World Trade Organization’s TRIPs Agreement, that will broadly mirror the current GI protection system of the EU.
It therefore appears that EU geographical indication registrations will not be recognised in the UK after Brexit: EU producers will be able to file for registration of GIs at national level in the UK.
A new logo will be created for GIs protected in the UK that will replace the EU logo after Brexit, whether or not a deal is finalised.
The UK government will publish further information at the beginning of 2019 on the new national GI protection system.
Exhaustion of intellectual property rights
In the event of a no-deal Brexit, businesses may find that they need the right-owner’s consent to export intellectual property-protected goods that have been legitimately put on the market in the UK to the EEA.
The UK is currently part of a regional European Economic Area (EEA) exhaustion scheme, meaning that IP rights are considered exhausted once IP-protected products have been put on the market anywhere in the EEA with the rights holder’s permission. This means that the IP right-owner cannot oppose the re-sale of an IP-protected product within the EEA.
In the event of a no-deal Brexit the UK will continue to recognise the EEA regional exhaustion regime from exit day to provide continuity in the immediate term for businesses and consumers.
It should be noted however that while IP-protected goods placed on the EEA market by, or with the consent of, the right-holder after the UK has exited the EU will continue to be considered exhausted in the UK, goods placed on the UK market by or with the consent of the right-holder after the UK has exited the EU will not be considered exhausted in the EEA.
This means that businesses exporting these goods from the UK to the EEA might need the right-holder’s consent.
Community plant variety rights
Community plant variety rights will be automatically recognised in the UK if already granted at the date of Brexit; the owners of pending applications will be able to apply with the UK authority for plant variety protection at national level, preserving the filing date of the EU application.
Community plant variety rights already granted on 29 March 2019 will be automatically recognised in the UK (no action required from the right-holder).
Holders of applications that are pending on 29 March 2019 who wish to obtain protection in the UK must file a new application with the UK national authority (Animal and Plant Health Authority – APHA); the date and DUS (distinctiveness, uniformity and stability) tests of the original EU application can be used for the new filing.
After 29 March 2019, filing for protection of a new plant variety with validity in all EU member states and in the UK will require two applications: one with the Community Plant Variety Office (CPVO) and one with the APHA.