WHAT HAPPENS TO YOUR IPR WHEN (IF) BREXIT HAPPENS?

12th September 2019

WHAT HAPPENS TO YOUR IPR WHEN (IF) BREXIT HAPPENS? Trade Marks 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! Registered Designs: 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 […]

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What is Article 13?

28th March 2019

The aim is to update the existing copyright laws for the internet age and put responsibility on YouTube, Facebook and Twitter, etc, to make sure that copyrighted material isn’t being illegally shared. This new law will shift the onus from copyright holders (to enforce copyright protection) to those of major platforms – i.e. making it these platforms responsibility to police the use of copyrighted materials and have mechanisms in place to deal with unauthorised use. It is thought that these mechanisms will involve the implementation of automated filters, however keeping these filters updated to recognise what is and not copyright infringement is the biggest challenge facing all these platforms….but of course the larger platforms will have more financial resources to hand. Comment – this isn’t law yet… and whether it will have effect upon UK Copyright law is still to be determined as Brexit negotiations continue. These new rules require approval by the European Parliament, which is likely to meet in March or April 2019, and each member state will then be given 24 months to adopt these new rules into national laws. A directive sets out a goal that all EU member states must achieve, however it is up to the individual country how they will implement them, as Copyright law varies country to country. So, whether this new Article 13 really helps the copyright owners remains to be seen? Of course, we must keep up with the technology advancements – however it will be very interesting to see if the actual implementation of this new directive standardises Copyright laws across Europe. The main question is how this Directive will affect the UK post Brexit? Currently the UK and other EU member states are party to the main international treaties on copyright and related rights – and these are not dependent upon the UK being a member state of the EU. In addition, there are EU cross border copyright mechanisms that go beyond these international treaties (e.g. Sui generis database rights; portability of online content service and country-of-origin principle for copyright clearance in satellite broadcasting). After April 12th, 2019, if no deal is reached the UK membership to these international treaties will remain unchanged. However, the EU cross-border copyright mechanisms will extend only to member states of the EU or EEA – so on exit the UK will be treated by the EU and EEA as a third country and the reciprocal element of these mechanisms will cease to apply to the UK. It is not clear at the time of writing if and when the new copyright directive will be passed, but if passed on exit day – or in the transitional period but with a deadline date after exit day – then the UK would have an option to make it UK law or not. The UK is now at a crossroads and a lot hinges on whether a deal or no deal is reached, but whatever the UK decides the EU has played a very important part in shaping our copyright laws to date. If you have any concerns or questions regarding copyright law in the […]

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It doesn’t always ends in smiles…

27th March 2019

UKIPO Decision BL Number O/ 113/19 Background: SK SMILEYGROWTH INT’L CO LTD filed a UK trade mark application for SMILEYGROWTH; however this application was opposed by THE SMILEY COMPANY SPRL – who relied upon an EU trade mark registration for the mark SMILEY. Both marks covered general household, dining, kitchen and personal care items. Main points from the decision: THE SMILEY COMPANY SPRL had to prove genuine use of its mark SMILEY. The hearing officer accepted that the opponent operates as a licensing company and it licenses use of the earlier mark SMILEY to licensees who manufacture and sell the goods. Genuine use of the earlier mark by licensees and with the consent of the proprietor is also deemed to be genuine use by the proprietor. There was likelihood of indirect confusion between the marks and that average consumer instinctive reaction, when faced with the applied mark in the purchasing process, will therefore not simply be to bring to mind the earlier mark – but will be to assume there is an economic connection between the two undertakings. The additional GROWTH component will be seen as a variant brand. The opposition was successful and the registration for SMILEYGROWTH was refused. Comment – this case is interesting because use by licensees is treated as equivalent use to that of the licensor. If you are looking to franchise your brand, then please come and speak to us, as we can help with the drafting of suitable licenses to meet you everyday needs.

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