As the UK prepares to leave the EU, IP right holders will wish to ensure they are ready to deal with the changes that Brexit will bring. Simon Miles, head of the European Communities Trade Mark Association’s (“ECTA”) Brexit task force, outlines some of the key points on what will happen to IP rights during and after the end of the transition period.
The Withdrawal Act and beyond
First, a quick recap. Following the UK General Election on 12 December, the Conservative Party obtained a landslide victory of 80 seats, their largest majority since Margaret Thatcher’s victory in 1987. The UK Prime Minister, Boris Johnson re-affirmed his commitment to “Get Brexit done” and on 23 January 2020 the European Union (Withdrawal) Act 2018 received Royal Assent. On 29 January 2020, members of the European Parliament ratified the terms of withdrawal by 621 votes to 49. The Withdrawal Act, of course, is the legislation that will implement the withdrawal agreement negotiated by the UK and EU, the terms of which were the cause of much political wrangling in the UK parliament over the last two and a half years.
The ratification of the Withdrawal Act brings some relief to a period of great uncertainty. It allows the UK to depart the EU on 31 January 2020, and for a transition period to run from 1 February 2020 until 31 December 2020 (subject to any extensions). During this period, the UK will continue to follow all of the EU’s rules and there will be no difference to the trading relationship.
The transition period affords the UK and EU a period in which to negotiate a new trade agreement. There are differences of opinion in relation to whether this rather challenging task will be completed by 31 December this year, and indeed the European Commission doubts that the timetable is achievable. Boris Johnson has insisted that the transition period will not be extended.
Intellectual Property Rights
In terms of IP rights, the status quo will be maintained until the end of 2020. The UK Government published an update here on 29 January 2020, which confirms that EU law will continue to apply as it does now in the UK, and that there will be no disruption to UK Intellectual Property Office services during the transition period. On 27 January 2020, the EUIPO updated its information here on the impact of the UK’s withdrawal from the EU on EUTMs and Registered Community Designs (“RCDs”).
As has been widely reported the UK government has agreed certain provisions with the EU which are contained in the Withdrawal Act and which should ease the pain at the end of the transition period. However, there will of course be significant changes following withdrawal at the end of 2020 because all of the EU Treaties, and the general principles of EU law will cease to apply in relation to the UK. Existing EU regulations will only continue to apply in the UK insofar as they are not revoked or modified by regulations under the Withdrawal Act. The Withdrawal Act contains provisions to convert this existing body of directly applicable EU law into domestic law through statutory instruments. This is a massive task.
As a result, many Guidance Notes are being published by the UK Government covering all of the consequent changes which will result from life outside the EU. One particular Guidance Note entitled “Changes to EU and international designs and trade mark protection after the transition period” (“the Designs Guidance Note”) was published on 30 January 2020. A copy can be seen here.
The Designs Guidance Note confirms what is already well-known – that an equivalent UK registration will be created for every registered EUTM and for each RCD at no cost to the proprietors at the end of the transition period. Therefore, in theory there is no need to re-file in the UK for existing EU registrations. However, as we get closer to the end of the transition period, it will be necessary to file separate applications in the EU and the UK because pending EU applications as at 31 December 2020 will not be converted and will need to be re-filed in the UK.
Mechanisms exist to enable applicants of EUTM and RCD applications to apply to register equivalent UK rights in the 9 months following 1 January 2021. The applications will be treated as UK applications and examined under UK law, and where appropriate priority claims will be inherited by the UK registration.
The Designs Guidance Note also sets out measures for applicants wishing to opt out of the automatic creation of a UK equivalent RCD, for renewals and restoration of rights, and for deferred publication.
Other realities following withdrawal at the end of 2020 which are worth noting are:
- In existing EUIPO opposition and cancellation actions if the opponent is relying only on UK rights, they will fall away if the action is still active at 1 January 2021.
- Litigants in the UK have hitherto been entitled (in certain circumstances) to obtain a pan-European injunction, but these will no longer be available in the UK after Brexit.
- EU Customs notices will no longer apply to the UK and a separate filing in the UK will be required.
- The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019 provide that after the transition period, rights in goods put on the market in the EEA will continue to be exhausted in the UK, but there will be no reciprocity for goods put on the market in the UK travelling to the EU. Therefore, unless there is an agreement between the EU and the UK in relation to this, owners of UK IP rights will not be able to prevent parallel imports from the EEA into the UK, but owners of EEA rights will be able to prevent goods put on the market in the UK from being sold in the EU.
A taste of what might be to come in the UK (on this occasion from a copyright perspective) was indicated by Chris Skidmore, the Minister of State for Universities, Science, Research and Innovation, on 21 January 2020. He said that as EU Member States have until 7 June 2021 to implement the reforms under the new EU Copyright Directive, and as the UK will have left the EU by then, the UK will not be required to implement the Directive, and the Government has no plans to do so. The UK is a big player in the European market for digital services and it remains to be seen how closely aligned the UK will remain to EU laws in the future in order to protect service providers in relation to copyright in particular. It could be that divergence has the effect of excluding the UK from the lucrative European Digital Single Market.
It is clear that there are many developments to come. There will be lengthy negotiations between the parties, and substantial unravelling of EU laws in the UK. The extent to which divergence in laws takes place will play out over time, but, in relation to IP laws it is hoped that the differences will not be too significant because of the connected nature of trade and because harmonisation is beneficial – data protection laws being a very good example.
A version of this article first appeared on the European Communities Trade Mark Association’s website.
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