Uncertainly continues to swirl around Brexit—from the possibility of a vote to rule out a no-deal Brexit, a vote to extend the United Kingdom’s departure, to the possibility of a second Brexit referendum.
As international entities that do business in and with the UK brace for whatever churning impacts Brexit may bring, a no-deal Brexit and the risks it could present to their intellectual property (IP) should be highly concerning. Therefore, protecting IP is likely at the top—or should be—of international organisations’ Brexit to-do lists as 29 March 2019, or “B-day,” approaches.
If your company currently does business overseas or across the border of another country, including the UK, or is contemplating doing so, you need legal representation that understands how to protect IP, particularly in the aftermath of a potential no-deal Brexit. With no exit plan or legal framework currently in place, it will serve businesses well to understand that conducting business in or with the UK in the post-Brexit marketplace will be similar to doing so with other “third” countries, such as the United States, without any agreement to the contrary.
The impact of a no-deal Brexit and the risks it poses to IP are not entirely clear yet, and there remains myriad unanswered questions that require competent legal advice. Although there are few answers to any specific questions, each IP matter should be studied on its own merits by qualified Solicitors, so that soundly based opinions regarding specific risk analysis and strategic guidance can be provided.
What is clear is that the EU trademarks and community design rights will no longer have effect in the UK after it departs the EU on 29 March 2019. It appears that the UK will provide registered EU trademark and design rights holders with an equivalent UK right after its exit, thereby continuing protection in the UK. However, the situation is not nearly as clear with regard to unregistered community design rights. That means that it is important for Solicitors to assist their clients in determining whether they should simultaneously disclose designs in the EU and UK to try to obtain maximum protection.
The UK has issued its own guidance regarding IP in the event of a no-deal Brexit, specifically focusing on trademarks and designs, patents, copyrights and exhaustion of IP rights. Among its guidance:
Trademarks & designs
The UK guidance, which was published on 16 January 2019 and updated 22 February 2019, indicates that, in a no-deal situation post-Brexit, EU trademarks and registered community designs will continue to be protected and enforceable in the UK by way of providing an equivalent trademark or design that is registered in the UK. The trademarks and registered community designs may be renewed; form the basis for cases in UK Courts or the Intellectual Property Office’s Tribunal; and will also be allowed to be assigned and/or licensed independently from those rights established in the EU. There are a number of areas where details have yet to be addressed and in which new legislation may be necessary.
Patents, copyrights & exhaustion of IP
Regarding patents and supplementary protection certificates (SPCs), the current EU patent system will not be affected and UK organisations will be able to continue to apply for SPCs within the EU. The UK appears to intend to seek to remain part of the Unified Patent Court under a no-deal Brexit situation.
With no deal upon exit, the UK will be considered a “third” country and the current reciprocal elements of copyright rules will not apply and certain cross-border copyright mechanisms will no longer work in the way they are intended, according to the UK guidance.
Also, in a no-deal Brexit, the EEA regional exhaustion regime will continue to be recognized by the UK, with the goal of providing continuity for consumers and businesses. While goods will continue to be allowed into the UK, there may be restrictions on goods from the UK to EU nations.
IP protection uncertainty
Clearly, much uncertainly remains regarding Brexit and its impact on IP, particularly in the event of a no-deal Brexit. If an entity does not renew its protection in UK, what commercial opportunity is there for another entity to market the goods? Can a distributor claim trademark rights for goods that it imports from EU? Does one need to be the authorized trademark owner in EU to claim UK trademark? If a trademark is available in UK, can a different company manufacture and sell goods into UK than in EU?
These and other questions deserve full consideration on a case-by-case basis by a knowledgeable Solicitor who possesses a thorough understanding of trademarks, designs, patents and IP as it relates to international commercial business.