Intellectual Property in a post-Brexit world
Charlotte Burroughs provides an update as to how intellectual property will be affected after the end of the Brexit transition period.
The UK formally left the EU on 31 January 2020 and we are currently in a transition period. At the time of writing it is expected that the transition period will now come to an end as planned on 31 December 2020, as both the UK and the EU have now ruled out any extension.
The UK’s exit from the EU will affect various European Intellectual Property rights including registered and unregistered design rights, copyright and domain names and businesses should ensure they are aware of these changes and any actions they may need to take. Please see this article for an update in relation to trademarks.
Registered Community Designs (“RCD”)
European Registered Designs currently include protection in the UK and as the UK will remain part of the EU registered community design system throughout the transition period RCDs will continue to extend to the UK during this time. At the end of the transition period, a new comparable UK design right will be created atomically based on the EU right. This will also apply to any international design registrations which designates the EU.
For pending registrations, applicants will have a period of nine months from the end of the transition period to apply in the UK for the same protection.
The EU’s unregistered Community design right (“UCD”) will continue to be valid for the remainder of its period of protection (which can be up to three years as from the date on which the design was first made available to the public in the Community). The UK has also created a new unregistered design right, called the “supplementary unregistered design”, which provides equivalent protection to a UCD in the UK for designs created after the end of the transition period. The means that design features including surface decoration and the appearance of a product can be protected under unregistered design law in the UK going forward. The new right will sit alongside the existing UK unregistered design, which remains unchanged.
Unregistered community designs arising before the end of the transition period will continue to be protected in the UK for the remainder of their three-year term.
Brexit will have no effect on European patents designating the UK that are currently in force. This is because the European Patent Convention and the European Patent Office (the EPO) that manages it are independent of the EU and in any event, have always had a number of non-EU members such as Switzerland, Norway and Turkey. The UK will remain part of the European Patent Convention as a similar non-EU European member.
Brexit is unlikely to greatly affect UK copyright law as it is a national right that each country provides separately. EU law will continue to apply to the UK until the end of the transition period and continued reciprocal protection for copyright works between the UK and EU is further assured by international conventions, such as the Berne Convention and the TRIPS Agreement, which will continue to apply in the UK. However,, there is a real risk that going forward and in time, differences may emerge between UK and EU copyright law, which may pose a challenge for businesses that operate in both territories, but for now this remains to be seen.
Geographical indications (“GI”)
The UK will set up its own geographical indication schemes for food, drink and agricultural products and there will be new UK GI logos for those products protected under the UK schemes. Existing UK products registered under EU GI schemes at the end of the transition period will remain protected in the UK under the UK GI schemes. For those products, producers will have until 21 January 2024 to display the new UK GI logo on their packaging. Where the products are protected in the EU, producers can continue to use the EU logo in the UK after the transition period. UK GIs registered under the EU GI schemes by the end of the transition period will continue to receive protection in the EU. However, all new UK products will need to obtain UK GI protection first before securing EU GI protection. We anticipate that may be further developments in relation to GI protection as part of discussions relating to free trade arrangements.
During the transition period UK business will continue to be able to hold .eu domain names, but after the expiry of this period, those wishing to retain .eu domain names can only do so if they can meet certain requirements: that they are an EU citizen or resident, an undertaking established in the EU, or an organisation that is established in the EU.
EURid who handle EU domain name registrations, have stated that on 1 October 2020 it will issue an email notification to all UK registrants and registrars will lose their eligibility by 1 Jan 2021, unless they can update their registration data by the end of the transition period to prove that they are eligible. More information which sets out the process in detail can be read here.
All .eu domains that do not comply will be withdrawn on 1 January 2021, and then become available for third party registration twelve months after.
If you are a business which uses a .eu domain name in respect of your website, or one of your websites, and you are a UK incorporated company, you should, if you wish to continue using the domain, transfer the registration into the name of an EU subsidiary (if you have one). If this is not possible other options are to consider appointing a European based agent as the administrative contact, or redirect web traffic to a new top level domain (.com, .co.uk etc.).
Key actions to take now
- Consider registering new registered and unregistered design rights in both the EU and the UK to ensure it is afforded protection in both.
- Identify and record details of EU registered design rights s that will receive UK comparable design rights and make a note of a relevant details.
- Consider registering new geographical indications in both the UK and the EU and ensure that products with UK GI protection are labelled with the new UK GI logo by 21 January 2024.
- Transfer .eu domain names into to an EU subsidiary or otherwise consider appointing an EU representative or redirect web traffic to a new top level domain.