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What Would a No-Deal Brexit Mean for the Protection of IP Rights?

no deal brexit
Arty Rajendra Partner and Head of IP Disputes in the UK at Osborne Clarke legal practice

The UK will exit the European Union in March 2019, and despite some positive noises from the Commission and Theresa May, the possibility that ‘no-deal’ will be struck on the terms of the UK’s future relationship with the EU cannot be dismissed lightly.

There are many things companies will need to consider if this comes to pass, and IP should be something they are looking at now. With the release of the no deal technical notices in September, we have Government guidance on the provisions for IP rights in the eventuality of a no-deal, and what businesses need to do now to protect themselves.

Registered Trade Marks and Designs

The UK will provide holders of registered EU trade marks (which protect brand names and logos) and registered Community designs with an equivalent right which will come into force at the point of the UK’s exit from the EU. Disappointingly, the notice stops short of saying that this will happen automatically and for free, simply stating that the new rights will be provided “with minimal administrative burden”.

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The UK will give applicants of pending EU trade marks or Community designs a nine-month priority period to apply for an equivalent UK right whilst retaining the same priority date as the EU right.

Patents

Certain patents for medicinal products are eligible for extended protection through a Supplementary Protection Certificate (SPC). UK law and practice relating to SPCs currently stems entirely from EU legislation. The no-deal notice states that the UK will form its own SPC regime on exit day, based on existing EU law. Whilst we do not currently know what that new UK regime will look like, we suspect it will simply mirror the current EU provisions.

The Unified Patent Court (UPC) is a new proposed court which will hear disputes related to opted-in European Patents and the newly created Unitary Patent. The current plan is that the UPC will only be open for participation by EU member states. It is still unknown whether the UK will be able to participate after Brexit. The notice considers the possibility that the UPC does not come into force at all, in which case, there are no steps to be taken on exit day.

Copyright

Amongst other things, copyright protects software, so it is an important IP right for tech companies.

The UK’s continued membership of the main international treaties on copyright will ensure that the scope of protection granted: (a) in the UK to copyright works created and/or owned by all foreign nationals and companies; and (b) in the EU to copyright works created and/or owned by UK nationals and companies, will remain largely unchanged.

However, the notice points out that the Portability Regulation (to broaden the access of online content services in the EU) and country of origin principle in the SatCab Directive (allowing broadcasting organisations to broadcast throughout the EU requiring only one licence from the country of origin), will cease to apply to the UK. This means online content service providers will not be required or able to offer cross-border access to UK consumers, and satellite broadcasters may need to clear copyright in each member state into which they broadcast.

So what should UK businesses do now?

Despite the assurances that protection of EU trade marks will be maintained in the event of a no-deal Brexit, brand owners may still wish to consider filing UK trademark applications now for new brands and some marks that are currently only protected as EU trade marks.

Companies who are parallel importers of equipment or software should also be aware that although product put on the market first in the EU can be freely imported into the UK in a no-deal scenario, the same does not apply to product put on the market first in the UK and sent to the EU.  That product is likely to infringe EU rights in a no-deal scenario.

We are also awaiting further clarification of how the UK government intends to deal with ongoing disputes based on EU IP rights in a no-deal scenario. That issue will likely require input from the Ministry of Justice and is part of a wider discussion on civil enforcement generally.
This article is from the CBROnline archive: some formatting and images may not be present.

CBR Staff Writer

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