Following years of negotiations, the UK formally withdrew from the EU on 31 January 2020. However, there is now a transition period set to last until 31 December 2020 before many of the practical implications take effect. In this bulletin, we take a look at how intellectual property (IP) rights will be affected.
What is the transition period?
Throughout the transition period, the UK will be subject to EU law and will remain part of the EU customs union and single market, meaning travel, work and trade arrangements will be unaffected. However, the UK is no longer a member of European Parliament or the European Commission. The UK and the EU are now negotiating a free-trade deal, although it remains to be seen whether both sides will agree before the transition period ends. The parties might also agree to extend the transition period, particularly given the difficulties imposed by the COVID 19 pandemic.
Regardless of this uncertainty, Title IV (Articles 54 to 61) of the Withdrawal Agreement, as well as various UK IP Regulations, give us some indication of how EU rights will be treated in the UK moving forward.
European IP Rights
As is the case around the world, individual countries across Europe have their own laws and registers for recognising and protecting various forms of IP rights. However, there are also systems offering protection for IP rights extending across key European jurisdictions, providing a more efficient and cost-effective way to secure rights compared with filing and maintaining separate registrations in each country. These include:
- European Union Trade Marks (EUTM): Trade marks registered with the European Union Intellectual Property Office (EUIPO) are enforceable in all 27 member states of the EU and are valid for an initial period of 10 years, renewable indefinitely;
- Registered Community Design: Designs registered with the EUIPO are likewise enforceable in all EU member states. These are valid for five years from the date of filing and can be renewed in five-year blocks up to a maximum of 25 years;
- Unregistered Community Design: Unregistered designs are afforded less robust protection over a range of design features including two- and three-dimensional aspects, such as surface decoration and product shape. Unregistered designs are only protected for three years from the date the design was first publically disclosed within the EU and cannot be renewed; and
- European Patent: Patent protection can be obtained by filing a single application with the European Patent Office (EPO). The grant of a European patent is akin to a ‘bundle’ of national patents, although they must be validated at IP offices of individual countries selected by the applicant. Significantly, the territory covered by a European patent includes the EU member states as well as other countries, including the UK. European patents are valid for up to 20 years, provided annual annuity fees are paid.
These rights can be held by any individual or entity, whether European or not. Many Australian businesses secure European IP rights, particularly to protect their export trade and international operations.
What will happen to European IP rights in the transition period and beyond?
IP rights will continue to be protected and enforceable as though the UK were part of the EU for the duration of the transition period. Generally, existing EU rights will automatically be granted comparable UK rights, which will then need to be maintained and renewed separately. Some detail on how these changes will affect various IP rights is set out below.
- Registered EUTMs: Holders of EUTMs registered with the EUIPO before the end of the transition period will automatically receive an equivalent UK trade mark registration, with the same filing and renewal dates as the EUTM. This will occur free of charge and without re-examination by the United Kingdom Intellectual Property Office (UKIPO);
Similarly, international registrations filed under the Madrid Protocol that are protected in the EU at the end of the transition period will also receive an equivalent UK trade mark registration. However, this may need to be renewed and maintained with the UKIPO independently of the international registration.
In either case, if the EUTM is subsequently cancelled, the UK registration will also be subject to cancellation, provided that the grounds are recognised under UK law.
- Pending EUTMs: EUTM applications that have not proceeded to registration by the end of the transition period will not be automatically protected in the UK. Applicants will have nine months to file for protection of the same mark in the UK and retain the priority date of the EUTM. In many cases, applicants will already have separate trade mark applications with the UKIPO;
- New EUTMs after the transition period: After the transitional period ends, applicants will need to file separate applications for an EUTM and a UK trade mark in order to attain the same protections previously afforded by an EUTM; and
- Use: After the transition period, owners of EUTM registrations will need to continue using the trade marks within the remaining member states of the EU, otherwise the registration may become vulnerable to cancellation on the grounds of non-use. Conversely, owners of corresponding UK trade mark registrations will need to ensure the trade marks are used within the UK.
- Registered designs: Owners of registered Community designs will automatically receive corresponding UK Registered Designs at the end of the transition period;
- Pending design applications: As with EUTMs, an applicant that has filed an application for a registered Community design that has not yet been granted and published will have nine months to apply for protection of the same design in the UK;
- New applications after the transition period: After the transitional period ends, applicants will need to file separate applications for a registered Community design and a UK registered design in order to attain protection across both jurisdictions;
- Unregistered designs: UK law already recognises a form of unregistered design rights, but the qualifying criteria differ in a variety of ways from those for unregistered Community designs in the EU. To bridge this gap, the UK is introducing two new design rights:
- Continuing Unregistered Designs: These will automatically protect unregistered Community designs disclosed before the end of the transition period, and will remain valid for the same duration remaining on the unregistered Community design; and
- Supplementary Unregistered Designs: These will protect unregistered designs that are first disclosed in the UK after the transition period, and will be protected for a three-year period. However, this protection will not arise if the first disclosure takes place outside the UK, in which case you should consider registering the design right in UK before the design is first disclosed elsewhere. Conversely, if disclosure first occurs in the UK after the end of the transitional period, it may not be protected in the EU as an unregistered Community design, so it would be prudent to register a Community design before the design is disclosed.
Participation in the European Patent Convention is distinct from membership of the EU, so Brexit will not affect the scope of protection for European patents.
The Unitary Patent is a proposed additional form of European patent that would provide uniform protection in the territory of participating EU member states. However, it has not yet come into force and its future is in doubt, partly as a consequence of indications that the UK may no longer be party to the Unitary Patent system.
Generally, works protected by copyright in the EU will continue to be protected in the UK, and vice versa, beyond the transition period. This is because the UK is a party to international conventions governing copyright law, namely, the Berne Convention for the Protection of Literary and Artistic Works and the Universal Copyright Convention.
However, there will be some impacts on copyright law, including that:
- UK broadcasters will be required to clear rights in all EU member states where their broadcasts reach;
- Orphan work status will no longer be mutually recognised;
- UK nationals will not be able to access digital content subscriptions when travelling in the EU; and
- Digital content providers offering services in the EU will need to clear relevant rights in each member state.
EU law provides for database rights protecting information stored in a database resulting from substantial investment in obtaining, verifying or presenting data. These are protected across the European Economic Area (EEA), which consists of Iceland, Liechtenstein and Norway in addition to the EU. Only databases made by citizens, residents or businesses in the EEA are eligible for database rights protection. The impact of Brexit is that:
- Existing database rights: Existing database rights will continue to exist for the remainder of their duration; and
- After the transition period: Databases created by UK citizens, residents and businesses after the transition period ends will no longer be eligible for database rights protection in the EEA. These will instead be protected under new database rights limited to the UK.
The original, creative arrangement of material derived from a database may be subject to separate copyright protection, which will continue to remain in force internationally.
Registration of new .eu domain names is now limited to:
- Citizens of EU member states;
- Natural persons resident in the EEA; and
- Representatives of organisations established in the EEA.
UK registrants are entitled to retain existing such domain names during the transition period. However, these registrations will need to be transferred to another person or entity meeting the above eligibility criteria in order to continue maintaining and renewing the domain name after the transition period runs out. For UK businesses with no connection to the EU, any .eu domain names may need to be abandoned and its online presence transferred to an alternative available domain name.
Geographical indications recognised in the EU will continue to be protected in the UK.
These changes present a timely opportunity to review IP rights across Europe needed to ensure that protection is maintained in the UK and avoid disruption to their businesses. Appropriate steps may include:
- Filing EUTMs no later than August 2020 to allow time for them to attain registration before the end of the transition period in order to secure protection in the UK as well;
- Updating any EUTM and Community design registrations to nominate an EU-based agent as the address for service;
- Consider potential licensing implications arising from impacts on copyright law; and
- Review any .eu domain names and contemplate transitioning to alternative domain names if necessary.
Once the transition period ends, businesses will need to consider:
- Filing separate UK trade mark applications for EUTMs that do not reach registration by the end of the transition period;
- Whether they make use of trade marks both in the UK and in the remaining EU member states in order to guard against removal of their registrations on the grounds of non-use;
- Filing separate UK design applications for Community designs that are not granted and published by the end of the transition period;
- Filing UK design applications for designs that will be first disclosed after the end of the transition period outside of the UK, as these will no longer be protected by unregistered design rights; and
- Filing Community design applications for designs that will be first disclosed after the end of the transition period outside of the EU, as these will no longer be protected by unregistered Community design rights.
Additionally, EUTMs and Community design registrations are likely to be less valuable once they no longer extend rights to the UK. Businesses may therefore decide it is more effective to register these rights separately in the individual countries of interest to them.
How can we assist?
If you are concerned about how your IP rights may be affected by these changes, or if you are looking to register and protect your IP rights in the EU or the UK, please feel free to contact a member of our IP, Technology & Media team to discuss possible solutions and next steps.
This article was written by Luke Dale, Partner, Scott La Rocca, Senior Associate, and Kelly Williamson, Solicitor.