14th August 2018

The Issue

In March 2019 the UK will leave the European Union. The effect of this being that the UK Parliament will regain sovereignty and the UK will be dependent on domestic legislation.

In order to protect a brand, business may look to register their intellectual property (IP) in order to protect it. Currently, it is possible to register a trademark within the European Union. The effect is that a trade mark can be protected in multiple Member states. Post-Brexit there are questions as to how IP rights such as trademarks will continue to be protected, such as:

  • How will IP rights which have already been registered, continue to be protected in (1) EU rights in the UK and (2) UK rights within the EU?
  • What will the process be for ensuring protection throughout the UK and the EU?
  • How will parallel imports be affected? This has already been in the news this week surrounding the ‘Schweppes’ brand and how such IP rights may be exhausted.

What the EU wants

On 6 September 2017 the European Commission released its comments on how it wishes intellectual property to work post Brexit. The paper called ‘Intellectual Property Rights (including geographical indications) sets out five general principles that the Commission wish to include  in order to create certainty. These are:

  1. Automatic recognition of IP rights in the UK – following the break from the EU, there will be an automatic division of IP rights. The UK and the EU, therefore, are to have corresponding registered rights;
  2. Ongoing applications entitled to keep benefits – at the point of leaving the EU, the applicant should be entitled to keep the benefit of any priority date when applying for equal rights within the UK;
  3. Entitlement to Supplementary Protection Certificate (or an extension) – this applies to pharmaceutical or plant protection products where the active ingredients are patented, the SCC therefore makes up for any delay in using the patent. The Commission’s position is that this should continue post-Brexit with an equivalent right in the UK;
  4. Legal protection of databases – Rightholders of databases should continue to enjoy protection in Member States under Article 7 of Directive 96/9/EC; and
  5. Exhaustion of rights – IP rights exhausted prior to the withdrawal date shall continue to be exhausted in both the EU and the UK post Brexit. The Commission also wish for the conditions concerning IP to be those defined by EU Law.

What steps can your business take to prepare?

  1. Register IP rights – when protecting branding it will be necessary to consider where it needs to be protected. Post-Brexit it is likely that the UK will implement some form of system that allows for European trade marks to either have a new application for corresponding rights within the UK or convert its current rights. If your business only intends to use a mark in the UK, then it would be simpler to register the mark solely within the UK. The UK will remain a member of the World Intellectual Property Organisation (WIPO), therefore if your business intends to use a mark in the UK, across the EU and potentially further afield, using WIPO to register your mark may be a more appropriate option; and
  2. Review your contracts  – It will be essential to review contracts within the business to see how brexit will affect enforcing its provisions. IP licences for example may express the territory to be the EU, therefore the license may need to be amended or a new license put in place.

This articles should not be considered as legal advice and should in no circumstances be relied upon as such. Please contact a member of the Advisory and Dispute Resolution team of EHL Commercial should you wish to discuss intellectual property rights and what you can do to protect your business.

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