Protecting IP rights pre- and post-Brexit

Brexit: a quick refresher. We have now passed 29 March 2019 – the day when, absent any extension, the UK was scheduled to leave the EU. The initially extended date of 12 April that applied because the House of Commons did not approve the Withdrawal Agreement has been further superseded by an extension to 31 October. Further extension remains a possibility, and the proposed Withdrawal Agreement would continue to apply EU law in the UK until the end of a transition period to December 2020. So it remains unclear when the UK will actually leave the EU and when EU law will cease to apply in the UK. 

In the meantime, the draft Statutory Instruments The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 and The Trade Marks (Amendment etc.) (EU Exit) Regulations 2018 have provided considerable detail about the UK’s proposed approach to provide ongoing protection in the UK in respect of existing trade marks and designs registered at the EU IPO.

Patents

Alongside the discussion of other intellectual property rights, it is important to remember that Brexit does not alter the current patent regime. The UK has no plan to leave the European Patent Convention, which is not an EU organisation, and both UK national applications and applications at the European Patent Office can be filed in the same manner, whether the UK is within or outside the EU.

The procedure for Supplementary Protection Certificates will also continue unchanged in the UK, while the EU Regulations covering SPCs will continue as transposed UK legislation (as provided by SI 2019/801 The Patents (Amendment) (EU Exit) Regulations 2019).

Trade marks and designs

If and when the UK leaves the EU and EU law ceases to apply to the UK, EU trade marks and registered Community designs will no longer have effect in the UK. At the date when the UK exits the EU legal order (which may be 31 October 2019, or a later date if a further extension is agreed or a Withdrawal Agreement ratified), if the EU right is registered the UK will automatically provide a ‘comparable’ UK registration whose subject matter and effective date will be identical to the registered EU right. Obtaining the UK registration will be free of charge. This comparable UK registration will then be subject to the payment of renewal fees, on the same schedule as (but independently of) the remaining EU right. Proprietors (or their representatives) will be notified of the planned UK registration and will be given the chance to opt out of receiving it. 

If the EU right is not yet registered, or, in the case of a registered Community design, registered with deferment of publication, then no rights in the UK will be given automatically. Instead, the applicant will have the right to file a UK application for the same subject matter, maintaining the same effective filing date, within nine months of the date that EU law ceases to apply to the UK. In this case, proprietors will not be notified, but will have to make their own arrangements to apply for UK protection. Filing fees will be payable in the same way as for a regular UK trade mark or design application.

These provisions afford a robust system for ongoing protection in the UK for EU-registered rights after Brexit. Applicants should not routinely need to double file in EU and UK separately in advance of Brexit, except perhaps in specific cases of high importance. 

International registration systems

The World Intellectual Property Office administers systems for the international registration of trade marks and designs. Moreover, the UK is a signatory of both the Madrid Protocol for trade marks and the Hague system for designs. If the EU is designated in an international registration, either a comparable UK registration, or the right to file a comparable UK application, will be provided analogously to the procedure described above for EU registrations and pending applications. However, these will be UK national rights outside of the international registration. Therefore, applicants using the international system may wish not to rely on the UK comparable rights being granted, but rather opt out of receiving these and instead designate the UK as a separate designation on filing. This will retain the convenience of the international system of having rights for multiple countries in a single registration and subject to a single set of maintenance fee payments. 

For future filings after the exit date, if protection is sought in the UK then a UK national application will be needed in addition to the EU application. International applications provide a convenient route to obtaining EU and UK protection simultaneously.

Unregistered design rights

The EU provides a three-year unregistered design right of relatively broad scope in respect of designs that are first published in the EU. Existing EU unregistered design rights will continue to have effect in the UK after exit day as a ‘continuing’ national right. The UK government has indicated that it intends to legislate to provide rights of similar scope in the UK after Brexit (in addition to the existing UK unregistered design right, which has a longer term but narrower scope). However, details of these proposals have not yet been made available. 

Conclusion

The UK government has responded to concerns from rights-holders, both in the UK and abroad, about losing protection in the UK having relied on the convenient EU registration systems. It is clear from the draft legislation that the government intends, to the fullest extent practicable, that rights are not lost in the UK and that the cost of maintaining protection in the UK as well as the rest of the EU is kept as low as possible.

Darren Smyth is a partner at EIP, London