Brexit and intellectual property: update

With Brexit now upon us, the specialist patent and trade mark attorneys at Serjeants provide an update on how your intellectual property (IP) will be affected as the UK leaves the EU.Brexit and IP

Timing

The United Kingdom will formally leave the European Union on 31 January 2020 but the effects on intellectual property (IP) rights will be delayed until the end of the “transition period” on 31 December 2020.

Patents

Brexit will have no effect on patents. The European Patent Convention is not based on EU law and already includes many non-EU countries. The UK will continue as a full member of the European patent system and we will continue representing our clients at the European Patent Office.

There are plans to create an EU unitary patent and a Unified Patents Court, which have been delayed because of legal challenges and other reasons. If those systems ever come into existence it seems unlikely that the UK will be able to participate, though attempts are being made to find a solution.

Trade marks and designs

Brexit will mean significant changes for EU trade marks and designs.

After the end of the transition period, existing EU registrations will continue in force in the remaining 27 member countries. However, they will no longer have effect in this country and so matching registrations in the UK will be created – automatically and without charge – to preserve the rights that exist here. From then on, the UK registrations will need to be renewed and enforced independently.

International trade mark and design registrations that designate the EU will be treated in the same way. Please note that the new, matching UK registrations will be independent and not part of the international registrations that they were derived from.

Any EU trade mark and design applications that are still pending at the end of the transition period will not be replicated in the UK automatically, but for a fixed period it will be possible to file new, matching UK applications that keep the same filing date.

If any existing licences or other agreements refer to EU trade marks and designs, UK law will treat them as applying to the corresponding new UK registrations unless the agreements state otherwise. We recommend reviewing any such agreements to make sure this is the outcome you want.

Use of a trade mark

A trade mark registration can be revoked if, during any period of 5 years, you do not make genuine use of the mark in relation to the specified goods and services in the territory concerned. After Brexit, using a trade mark in the UK will no longer support the corresponding EU registration (and vice versa). Therefore, if you own an EU trade mark registration but your main trade is in the UK, you might need to develop new markets in other EU countries to maintain the validity of the EU registration. Similarly, if your main trade is in the other EU countries, you might need to develop a new market in the UK to maintain the validity of the new UK registration. Any use that you have made of the trade mark before Brexit can still be relied on to support both registrations for up to 5 years afterwards.

Copyright

Copyright will be largely unaffected by Brexit. It is not an EU right, but it is governed by international conventions to which both the UK and the EU belong. Some EU directives have been incorporated into UK law and there are no immediate plans to change them.

Exhaustion of rights

Once the owner of an IP right has consented to goods being placed on the market in the European Economic Area (EEA), that owner’s rights are said to be “exhausted” and they cannot object to the goods being re-sold as “parallel imports” in any other EEA country (e.g., in competition with the goods of a local distributor).

As the law currently stands, there will an imbalance after Brexit: the UK will continue to permit parallel imports from EEA countries, but the EU/EEA have not said that they will permit parallel imports for goods first placed on the market in the UK.

Moving forward with Brexit

The team at Serjeants is keeping a close eye on how things develop during the Brexit transition period and will provide further IP updates should the situation differ from the above. Please check back regularly to ensure you don’t miss anything.