WHAT HAPPENS TO YOUR IPR WHEN (IF) BREXIT HAPPENS?
Currently, whilst the UK is a member of the EU it is possible for UK Companies (including partnerships, LLPs and sole traders) to apply for and obtain a Community Trade Mark (or a European Union Trade Mark as they are now known). The Community Trade Mark (“CTM”) enables the proprietor to secure registration protection in each member state in one ‘swoop’ rather than making 26 independent applications. 26 derives from the other member states, as it is assumed that the applicant would have secured protection on a domestic level in the first instance, albeit this is not always the case. In circumstances where the UK leaves the EU, then technically, any trade mark owner who has failed to obtain a “domestic” Mark within the UK will lose the rights and privileges afforded to trade mark owners.
Of course, it is entirely conceivable that nothing will happen.
CTMs are currently registered at the European Patent Office (a non-politicised, non-EU organisation) and so, you could argue that nothing would happen because the UK isn’t leaving the EPO. This of course, is unlikely to be the position. It has been stated that any non-UK trade mark that doesn’t have a reciprocal registration within the UK will not have the benefit of being able to rely upon its Community registration. However, as a means of obviating the ambiguity surrounding this, the UK Government confirmed in February this year that EU Trade Mark owners would have a 9-month period to convert their Marks (into UK marks).
As a Mark owner (and in circumstances where you trade with the EU and/or have a significant online presence), it is sensible to assume that the EU will impose a similar ‘grace period’ on any UK Mark holders that haven’t secured a European Union Trade Mark. If owners fail to do so (in either way of registration) then it is likely that they will lose the benefits of the registered trade mark (“RTM”) and so, steps should be taken in order to try and secure a EUTM as quickly as practicable.
Of course, you don’t need to have a registered trade mark in the UK.
The UK is a common law jurisdiction and so, trade mark owners can rely upon the tort of passing off without the need to register the Mark and although such protection is sufficient, it is not as sufficient as holding a Trade Mark Registration Certificate as the burden is much more on you as owner to evidence the “trinity” (compared to simply advancing the registration certificate and seeking damages / an account of profits.
Not all EU countries operate a common law jurisdiction and so, in circumstances where you lose your registration because of Brexit you may well lose your rights!
The UK government has confirmed that all Registered Community Designs (“RCD”) will be granted an equivalent status within the UK post Brexit. This equivalent status permits for an automatic cloning of an existing registration into a UK Design. It is said that there is no charge for this, and proprietors will also be able to claim the relevant priority dates.
Despite not being able to agree on much else, it has been confirmed that this right (or benefit) will apply even in the event of a “no deal” Brexit.
Unregistered Designs are widespread across the EU and so, to deal with this matter, the UK Government has confirmed (by a letter of intent) that a new unregistered design right will be created in order to reflect the characteristics of the unregistered Community design. It will be known as “Supplementary Unregistered Design Right”.
Any unregistered design that is protected prior to departure will remain protected.
However, it is important to note that the UK and the EU differ when determining case law relating to unregistered community design rights. Pursuant to UK law, unregistered design rights protection the design of all or part of an article automatically when an article is manufactured. It does not however, protect the surface areas. The EU adopts the contrasting view to this – it permits the protection to be extended to the surface area.
Whatever happens with Brexit (if indeed, Brexit happens), it is understood that there will be no impacts on any European Patents that have been validated in the UK. This is because although the European Patent Office grants the Patent, its “authority” does not solely apply to the EU member states but also to the 38 contracting states of the European Patent Convention (which the UK Is one)
A European Patent functions like a bundle of patents and so, if a (European) Patent is applied for at the European Patent Office all contracting countries can be listed.
Jurisdiction – the UK or EU:
Whatever happens post Brexit, it appears that there will be jurisdictional issues. In certain elements (such as the Unified Patent Court), the UK Courts would have to concede to EU law and this is clearly something that the UK wasn’t happy about in the first place, so the question has to be whether or not the UK will be a part of the Unified Patent Court and if so, whether or not it would accept EU law as being superior.
Whilst there is much doom and gloom surrounding Brexit, the reality is that the UK remains an incredible place to do business. It offers great protection to businesses; it adopts a pragmatic and commercial approach to the law and to the decisions that Judges hand down. Whatever rough times may be ahead, given the resilience of the UK and the businesses within it, in my view, the UK will come out strong and will survive.
What events like this do is enable you to look at your business and re-assess matters and your needs (whether immediate or future). Does it hurt to increase your IP portfolio by extending the protection your business needs? No, of course not. Should protecting your IPR be something that you, as a business (whatever your size or history) takes seriously – yes!
Utilising and exploiting your IPR can be a valuable commodity for your business and it is something that we at Southall Hathaway & Co LLP are able to assist you with.
Please contact us for further information.