Intellectual Property - managing the Brexit transition

At the end of the transition period on 31 December 2020 (IP completion day) the UK’s intellectual property regime will split away from the EU regime with which it has been interconnected for so long. We set out below a checklist for intellectual property owners managing the transition:

EU Trade marks (formerly ‘Community trade marks’):

• From IP completion day EU trade marks (EUTMs) will no longer cover the UK.
• The UK intellectual property office (IPO) will automatically grant holders of EUTMs equivalent UK national trade marks free of charge. 
• Right holders should carry out a health check on the validity of their UK marks and continuing EU27 marks, focusing particularly on where these marks are currently used. In some cases application for national trade marks in key European markets may be advisable.

.eu domain names:

• From IP completion day UK companies and organisations (if not also established in the EU) and individuals resident in the UK will no longer be able to own .eu domain names. 
• Companies and organisations affected should consider transferring ownership of their .eu domain names into the name of an eligible associated company or organisation where appropriate.
• Even where this is done, however, they should be aware that it will no longer be possible to rely on rights that are only recognised or established in the UK (e.g. a UK national trade mark) in .eu domain name dispute proceedings. They may also consider whether a different gTLD might be more appropriate.

Community (EU) design rights:

• From IP completion day Community registered designs (CRDs) will no longer cover the UK.
• The UK IPO will automatically grant CRD holders an equivalent UK national registered design right free of charge.
• Those holding existing unregistered Community designs (URDs) at IP completion day will continue to be able to enforce these rights in the UK for the remainder of their three-year term under a new name, “continuing unregistered Community designs”.
• A new, three-year unregistered UK design right (the “supplementary unregistered design right”) will be introduced at IP completion day to protect designs disclosed in the UK after Brexit.
• The existing UK unregistered design right (giving 10-15 years protection) will continue to be available for UK designs only.
• Right holders should review their unregistered design protection, in particular to check eligibility under the new regime. Going forward, designer owners should consider applying for UK registered design protection for key designs, an easy and inexpensive procedure.

Patents:

• Patents are currently national rights and will not be directly affected by Brexit.
• The EU legislation on supplementary protection certificates (SPCs) will be retained in UK law and SPCs will continue to be available by application to the UK IPO. SPCs extend patent protection for certain authorised medicines for up to five years.
• The UK Government has confirmed that it will not seek participation in the proposed EU Unified Patents Court (UPC) or Unitary Patent if these are introduced.

Copyright:

• Copyright is a UK national right that will not be immediately affected by Brexit. However, Brexit will result in the loss of reciprocal rights in a number of areas including:
  • Database rights – database rights that exist in the UK or EEA before IP completion day will continue for the remainder of their term. However, after IP completion day UK citizens, residents and businesses will no longer qualify for database right protection in EEA member states for new databases. A new, UK-only database right will be available to UK stakeholders but will not be enforceable outside the UK. Companies should review their contracts to ensure they give appropriate protection to their databases both in the UK and Europe.
  • Portability of online content – the recently introduced EU portability regime gives consumers across the EU the right to access their online content services (e.g. video-on-demand and streaming) as if they were at home when travelling within the EU. The UK has announced its intention to repeal this legislation. Service providers wishing to continue this service may face a high hurdle in securing the relevant permissions in Europe. 
  • Satellite broadcasting – current EEA ‘country-of-origin’ rules simplify the clearance of rights in cross-border satellite broadcasting, saving broadcasters from having to clear rights in all countries receiving the broadcast. This simplified procedure will no longer apply to broadcasts from the UK after IP completion day.
  • Cable retransmissions – after IP completion day, copyright holders whose works are broadcast from the UK and retransmitted via cable in the EEA will no longer be able to rely on the arrangements in the Satellite and Cable Directive which ensure that cable retransmissions are dealt with by a collecting society. 
  • Collective rights management – under current EEA rules collecting societies must represent any EEA right holder who requests representation, whichever EEA state they are based in. EEA collecting societies offering multi-territorial online music licences must also, if asked to do so, represent the catalogues of EEA collecting societies which do not offer such licences. After IP completion day collecting societies in EEA countries will not be obliged to represent UK right holders or societies unless national laws require them to do so.
  • Digitising works in cultural heritage institutions – the EU ‘orphan works’ exception applies where the author of a work is unknown or untraceable. It allows cultural heritage institutions such as libraries, museums or archives to digitise such works to maintain their collections. After IP completion day this EU scheme will no longer apply to UK institutions, although institutions wishing to maintain their online collections may be able to do so via the UK’s orphan works licensing scheme.
  • Marrakesh Treaty – the Treaty aims to improve access for visually impaired people to copyright works. The UK is currently party to the Marrakesh Treaty through the EU. The UK Government is hoping to ratify the Treaty in its own right by IP completion day.

Geographical indications (GIs)

• The UK will set up its own GI scheme broadly mirroring the current EU regime.

Parallel trade:

• Companies trading in IP protected goods (e.g. branded goods) may be affected by changes in the rules affecting parallel trade. Parallel traders buy such goods – e.g. branded medicines - in one EU country where they are cheaper and sell them into another, more expensive EU market. Under EU rules on free movement of goods, brand owners and other IP right holders are generally not able to object to this. After IP completion day these rules will no longer apply to goods sold from the UK into Europe with the result that brand and other IP owners in the EU27 may be able to stop parallel trade from the UK. The UK government has indicated, however, that it may continue to allow parallel trade from the EU into the UK, at least for a period. This is a space to watch.

IP licences:

•  Licensors and licensees should review existing licences to ensure that definitions – for example, the definition of the licensed territory – still operate as intended. They may also wish to consider whether licensing arrangements which treat the EU/EEA as a single licensed territory remain appropriate.