Brexit - Intellectual Property
Critical issues for businesses to consider:
Trade marks: From 1 January 2021, EU trade marks no longer cover the UK. All EU trade marks and international registrations designated to the EU registered before 31 December 2020 in the UK have been cloned on to the UK trade mark register as national UK rights, with the EU trade mark continuing to apply in member states of the EU. The cloned rights are called “comparable trade mark (EU)” and “comparable trade mark (IR)” and are equivalent UK national rights with the same application date, priority or UK seniority for the same goods and services. Applications for registration pending as of 31 December 2020 however were not cloned and have to be separately registered in the UK. Applicants have until 30 September 2021 to file an application for a UK national mark in order to avail of the same filing and priority dates as the original EU trade mark application.
Patents and Supplementary Protection Certificates (SPCs): The UK’s change in status vis-à-vis member states of the EU has not affected the existing patent system due to the fact that it is governed by the European Patent Convention, a multilateral international agreement that stands alone from EU law. SPCs for patented pharmaceutical and plant protection products are however regulated by EU law. The UK has retained the existing SPC framework but any new SPC applications filed in the UK after 31 December 2020 must have a valid UK authorisation, i.e. marketing approvals from the European Medicines Agency will be converted into equivalent UK authorisations. The Northern Ireland Protocol however provides that all new EU marketing authorisations granted after 1 January 2021 are valid in Northern Ireland.
Copyright and databases: As copyright is a non-registrable right, the dual registration considerations of other rights do not arise and the UK-EU Trade and Cooperation Agreement re-established many existing protections UK copyright owners enjoy in the EU and vice versa by virtue of non-EU international treaties on copyright. However certain cross-border protections particular to the EU have ended such as clearance for satellite broadcasts, reciprocal protection for sui generis database rights and orphan works exception. Two types of IP rights apply to databases: (i) copyright and (ii) sui generis database rights, which emanate from the EU Database Directive. Database rights in existence in the UK as of 31 December 2020 will continue to exist in the UK for their remaining lifespan. However, from 1 January 2020, reciprocal recognition between the UK and EU ceases so only EEA residents, citizens or companies may apply may hold database rights in the EU and UK residents, citizens or companies may apply for UK database rights created after that date.
Trade secrets: Regionally, the law protecting the acquisition, use or disclosure of trade secrets derives from EU Trade Secrets Directive. Similar to Ireland, the UK transposed the Trade Secrets Directive through national regulations in summer 2018 so protection of trade secrets therefore remains aligned for the time being though may deviate in future as UK or EU law in the area develops.
Registered and unregistered designs: From 1 January 2021, registered Community designs (RCDs) and unregistered Community designs (UCDs) will no longer be valid in the UK. Existing RCDs, like EU trade marks, as of that date were cloned into an equivalent UK design right. Similarly, existing UCDs as of 31 December 2020 are protected for the remainder of their three-year term in the UK. There is no ongoing system of reciprocity between the EU and the UK in respect of unregistered designs so businesses must choose between disclosing in the UK and getting a UK-wide right only, or in the EU and getting the EU-wide UCD.
Licence, franchise or trade mark co-existence agreements: All commercial IP agreements, including those currently under negotiation, should be reviewed where that has not already occurred. As territory is central to such agreements, definitions of territory, such as the “EU”, the “UK” or “Ireland”, should clearly identify the markets intended by the parties by stating whether such terms identify a given territory as at the time of the agreement or as they are constituted from time to time. Existing agreements should be reviewed in order to ascertain if any permissions are required from the rights holders.