Intellectual Property: What happens if there’s a No-Deal Brexit?
The UK government’s recent technical notices include the implications of a no-deal Brexit for UK intellectual property (IP) rights.
Trade marks and Community designs
- EU trade marks and Community designs are registered by the EU Intellectual Property Office and are governed by EU regulations. The government states that it will ensure that the all existing registered EU trade marks and Community designs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registered in the UK.
- The applicant of any application which has been file, but not registered, as at the exit date will have 9 months to apply in the UK for the same protections, retaining the date of the EU application for priority purposes.
- The owner of an existing EU trade mark or Community design will have a new UK equivalent right granted that will come into force at the point of the UK’s exit from the EU. The government has stated that “the new UK right will be provided with minimal administrative burden”.
- The government is yet to provide guidance on the status of any ongoing legal disputes in respect of EU trade marks and Community designs.
The EU cross-border copyright mechanisms extend only to member states of the EU or EEA. On exit, the UK will be treated by the EU and EEA as a third country and the reciprocal element of these mechanisms will cease to apply to the UK. This could have the following implications:
- No obligation for EEA states to provide database rights to UK nationals, residents, and businesses.
- Online content service providers will not be required or able to offer cross-border access to UK consumers under the EU Regulation on portability of online content service.
- If there is no deal on 29 March 2019, the relevant EU legislation will be retained in UK law under the EU Withdrawal Act 2018.
- Any existing rights and licences in force in the UK will remain in force after March 2019. For UK, EU and third country businesses there will be no significant change to the legal requirements or the application processes.
- Any existing rights and licences in force in the UK will remain in force after March 2019.
- The supplementary protection certificate (SPC) regime in the UK will continue to operate as before for UK, EU and third country businesses.
- The UK will explore whether it would be possible to remain within the Unified Patent Court and unitary patent systems in a no-deal scenario.
Exhaustion of IP rights
- The exhaustion of IP rights refers to the loss of the right to control distribution and resale of that product after it has been placed on the market within a specified territory by, or with the permission of, the IP owner.
- In the event of a no-deal Brexit, IP-protected goods placed on the EEA market by, or with the consent of, the IP owner after the UK has exited the EU will continue to be considered exhausted in the UK. This means that parallel imports of these goods from the EEA to the UK will be able to continue unaffected.
- Goods placed on the UK market by, or with the consent of, the IP owner after the UK has exited the EU will not however be considered exhausted in the EEA. This means that businesses exporting these goods from the UK to the EEA might need the IP owner’s consent.
Although the technical notices provide some welcome guidance as to the implications of a no-deal for IP rights, they still lack detail about the proposed new rights and how they will work in practice. We await further clarification and guidance from the government.