A Brexit no deal revisited…

Eric Ramage considers Brexit intellectual property guidance published by the UK IPO following the failure of UK Parliament to approve the Government’s Brexit withdrawal agreement.

Following Parliament’s decision to vote down the proposed EU withdrawal agreement, it seems prudent to revisit the implications for protection of registered Trade Marks, registered Community designs, and unregistered Community designs in the event of a no-deal Brexit. The UK IPO has just published guidance on intellectual property and Brexit in the event there is no deal. There has been no change to the guidance previously published and the UK IPO has referred to and confirmed the various technical notices that they previously published (and which have been subject of various blogs by me and colleagues in this department).

Although I am fully aware that Brexit fatigue will be setting in, it is prudent to revisit the IPO’s technical notices to draw together the government plans for a no deal Brexit on the intellectual property front. Before I do so, it is important to stress that any consideration of the impact of patents is outside the scope of this blog. Brexit is not expected to have any legal impact on the European Patent Convention, which is independent of the EU and has always had members which are not in the EU.

Trade marks and design rights

Before 29 March 2019
EU trade marks and registered Community designs are intellectual property rights granted by the EU Intellectual Property Office and are governed by EU regulations. A business, organisation or individual that owns an EU trade mark or registered Community design has that right protected across all EU member states including the UK.

Trade marks and registered designs can also be held through the international Madrid and Hague systems, and intellectual property rights obtained for the EU through these systems are also protected in the UK.

After March 2019 if there’s no deal
The Government will ensure that the property rights in all existing registered EU trade marks and registered Community designs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registered in the UK.

Right holders with an existing EU trade mark or registered Community design will have a new UK equivalent right granted that will come into force at the point of the UK’s exit from the EU, with minimal administrative burden. The trade mark or design will then be treated as if it had been applied for and registered under UK law. This means that these trade marks and designs will be subject to renewal in the UK, can form the basis for proceedings before the UK Courts and the UK Intellectual Property Office’s Tribunal, and can be assigned and licensed independently from the EU right.

After exit, businesses, organisations and individuals with EU trade mark and Community design applications which have not been granted at the date of exit will have 9 months in which to refile these with the UK Intellectual Property Office, seeking a UK equivalent right, but using the normal application process in the UK. For a period of 9 months from exit, the UK IPO will recognise filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application. Right holders taking this step will need to meet the cost of refiling the application in accordance with the UK application fee structure. Please contact a member of the intellectual property department to discuss any concerns you may have at this time.

These same provisions will apply to international registrations designating the EU filed with the World Intellectual Property Organisation. This ensures that there is continued protection in the UK from March 2019 onwards for trade marks and registered designs filed through the Madrid and Hague Systems, and designating the EU as the area where they apply.

Implications
Protection of existing registered EU trade marks or registered Community designs in the UK will be through a new, equivalent UK right which will be granted with minimal administrative burden
The UK IPO will notify rights holders that a new UK right has been granted by publishing a notification and guidance on their website, and we will endeavour to keep clients informed either directly or through an appropriate blog.

Proprietors that may not want 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 actions 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 pending applications for an EU trade mark or a registered Community design will not be notified by the UK IPO and after exit will need to consider what action, if any, to take.

New applications will be eligible to be filed in the UK for UK trade marks and registered designs as they are now, and at the cost specified in the UK fee structure.

UK applicants, (like EU and third country applicants), will continue to be able to apply for protection in the EU through an EU trade mark or registered Community design as they do currently.

Continued protection of unregistered Community designs

Before 29 March 2019
Unregistered Community Designs are intellectual property rights governed by an EU Regulation and that right is protected across all EU member states including the UK.

Unregistered Community designs protect a range of design features including two- and three-dimensional aspects such as surface decoration and product shape. The unregistered Community design provides three years of protection from the date that the design is first made available to the public (disclosed) within the EU. The unregistered Community design is entirely separate from the UK’s own design right, which protects product shape and configuration for a maximum period of fifteen years.

After March 2019 if there’s no deal
The Government will ensure that 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.

The UK will also create a new unregistered design right in UK law (to be known as the “supplementary unregistered design right”) which will mirror the characteristics of the unregistered Community design. Consequently, designs disclosed after the UK exits the EU will be protected in the UK under the same terms of the unregistered Community design.

Those UK unregistered design rights which exist at the point of exit will continue to be protected and the UK unregistered right will continue to exist for designs first disclosed in the UK.
Implications

UK, EU and third country designers will be provided with continued protection for those designs first disclosed in EU27 member states and already protected by an unregistered Community design right at the point that the UK exits the EU. Through the new “supplementary unregistered design right”, designs which are disclosed in the UK after the UK exits the EU will be protected in the UK under the current terms of the unregistered Community design.

This means:

• Existing unregistered Community designs will continue to be valid in the remaining EU member states.
• Protection of existing unregistered Community designs in the UK will be provided for with no action required by the right holder.
• Provision will be made regarding the status of actions involving unregistered Community designs that are ongoing before UK courts.

The protection of existing unregistered Community designs in the UK will continue through a new equivalent right which arises automatically and with no action required by the right holder. For eligible designs disclosed after exit, the supplementary unregistered design right will arise automatically.

Eric Ramage, who is of Counsel in the IP department, is a Fellow of the Chartered Institute of Trade Mark Attorneys, London, and a professional representative before the EU Intellectual Property Office. He was heavily involved with the UK parliamentary committee that preceded the introduction of the EU trade mark. He has been a Member of the European Communities Trade Mark Association since its inception and a Council Member since 2007. He is a member of its Professional Affairs Committee and of its Brexit Committee, and helped draft ECTA’s position paper to the European Commission on that subject.

If you wish to discuss this topic further or have any other questions, please contact any member of the Edwin Coe Intellectual Property team.

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