Experts Highlight What Will And Won’t Be Affected

Britain’s exit from the European Union could have an impact on IP rights in a number of ways. The following article looks at a number of key issues that businesses need to consider.

IP rights (largely) unaffected by Brexit 

Copyright – The UK is a member of a number of international treaties and agreements protecting copyright. Membership of theses treaties and agreements will be largely unaffected by Brexit. UK copyright works will continue to be protected around the world. However, certain EU cross-border copyright mechanisms will no longer apply as they do currently and the UK will be required to negotiate with the EU to reach an agreement on the arrangements for IP cooperation for the benefit of copyright holders in the UK and EU.

Patents – The European Patent System is not affected by Brexit. The UK is, and will remain, a member of the European Patent Convention (EPC), as the EPC is unrelated to the EU. UK businesses can continue to apply to the European Patent Office for patent protection which will include the UK.

Unregistered Community Design Rights - All Unregistered Community Design Rights which exist at the point that the UK leaves the EU will continue to be protected and enforceable in the UK for the remaining period of protection of the right.  The UK is to create a new unregistered design right in UK law which mirrors the characteristics of the Unregistered Community Design Right.

IP rights impacted by Brexit – EU Trade Marks and Registered Community Designs

In the event of an agreement, based on the current Withdrawal Agreement, a transition period will commence on 31 January 2019 and end on 31 December 2020 (or such later date as is agreed) during which time the UK will continue to be bound by EU laws and benefit from the existing EU IP regime. 

Under the Withdrawal Agreement, holders of registered EU Trade Marks and Registered Community Designs granted before the end of 31 December 2020 will become the holder of a ‘cloned’ registration, meaning the registration is granted an equivalent UK right which will retain the priority date of the EU application.  These rights will be granted without re-examination and will be free of charge to the rights holder. The comparable rights will be subject to the payment of renewal fees in the UK.

However, in the event of a no deal:

• On 31 January 2020, registered EU trade marks and Registered Community Designs will no longer extend to the UK.  Instead the registrations will be ‘cloned’, meaning the registration is granted an equivalent UK right which will retain the priority date of the EU application.  
• For any EU trade mark or Registered Community Design applications that are still pending on 31 January 2020, the applicants will have a nine-month priority window to file a corresponding UK trade mark or design application which will retain the priority date of the EU application, but will require an additional fee. 

Expert Opinion

“Whether a deal is agreed or not, now is the time to review your IP portfolios. In particular, you should consider your budgets and account for the need to file both UK and EUTM applications and any consequent, separate renewal costs.” Georgie Collins - Partner