Intellectual property rights and a “No Deal” Brexit – What is likely to happen?

With increasing speculation that no deal will be done between the UK and the EU, the UK Government has published a series of “technical notices” providing guidance on how to prepare for a no-deal scenario. These technical notices are written on the basis that there will be no concluded withdrawal agreement between the UK and the EU, which will mean the UK exiting the EU at 11:00 pm on 29 March 2019 with no transition period and no deal going forward. Five of these technical notices deal with different aspects of intellectual property. We have summarised the current position below.

Trademarks and Designs

• UK trade marks and UK registered designs – no change. These are UK rights and will not be affected by Brexit;
• EU trade marks and registered community designs. These will continue to be valid in the remaining EU member states and the UK will grant a “cloned” equivalent UK right to mirror what is already held in the EU. There will be an opportunity to opt out of receiving such a “cloned” UK right and the assumption therefore is that such a UK right will be granted automatically but for any opt out;
• Pending applications for registered community designs and EU trade marks – any pending applications as at 29 March 2019 will need to be refiled in the UK and there will be a period of nine months to do this during which the application can be refiled in the UK. These refiled applications will be given the same filing date as their EU equivalents;
• Unregistered community designs – these will be automatically protected in the UK.

Patents

• The position relating to European patents will remain unchanged following Brexit as these are governed by the European Patent Convention which is not related to the EU;
• If the Unified Patent Court does come into force (it is currently pending ratification by Germany) then as currently constituted it appears unlikely that the UK would be able to be a member. The UK Government has however expressed a desire to explore whether it would be possible to remain within the Unified Patent Court and unitary patent systems.

Copyright

• The basic reciprocal protections enjoyed by copyright owners will not change as these are guaranteed by international conventions (such as TRIPS, the WCT and Berne);
• UK businesses will not be able to rely on the Portability Regulation (meaning that online content survey providers will not be required or able to offer cross border access to UK consumers) or the Marrakesh Treaty (cross border transfer of accessible format copies of copyright works) although the UK intends to ratify this separately;
• UK based satellite broadcasters will cease to be able enjoy the reciprocity copyright clearance rule when broadcasting into the EEA and UK-based heritage institutions that make works available online in the EEA will no longer be able to rely on the orphan works copyright exception;
• The EU will cease to recognise the sui generis database right for UK business which in practice means that UK based businesses will need to look for other ways to protect their databases for example through licence terms.

Parallel Importing

• As things currently stand the doctrine of exhaustion of rights applies across the EEA meaning that in practice that once a product or other protected subject matter is placed on the market anywhere in the EEA the holder’s rights are exhausted and that product or other work can be moved freely around the EEA.
• The UK Government has said that it will continue to recognise the principle of EEA exhaustion in relation to goods which are imported into the UK. There will however, be no automatic right of reciprocity meaning that in practice UK businesses may well be put at a disadvantage when it comes to trade.

Geographical Indications

• The UK intends to create a new UK geographical indication (GI) system which will largely mirror the current EU regime. In practice this means that all the UK GI’s currently protected by the EU will be automatically protected under the UK regime although existing EU GIs would have to apply for protection under the new UK regime. It is also likely that UK GIs would need to reapply for GI status under the EU regime.

Comment

The UK Government has gone to lengths to stress that this is simply a case of covering every eventuality and that it still very much hopes and expects to reach a deal on the UK’s withdrawal from the EU. Time will tell whether that is going to be possible.

What however, is clear, from what we have seen to date is that there is a huge amount of detail missing from what the government has published in relation to IP rights. For example, nothing has been published about what will happen to ongoing disputes which relate to EU IP rights.

It is also clear that, while the UK Government is very much trying to reflect in these technical notices the position that it would expect to reach if there were a negotiated deal, if there is no deal with the EU then this very much assumes that the EU to reciprocate. Otherwise, UK businesses are going to be disadvantaged.

More generally, it remains to be seen what will happen as the respective laws of the UK and the EU begin to separate and presumably take different directions as the views of the UK courts diverge from those in the EU.

If you wish to discuss this topic further, please contact Nick Phillips – Partner, or any member of the Edwin Coe Intellectual Property team.

If you aren’t receiving our legal updates directly to your mailbox, please sign up now