Trademarks & Community Designs

EU trademarks and registered community designs are protected under EU law. They are granted by the EU Intellectual Property Office and governed by EU regulations. Rights holders may also acquire trademarks and registered design registration through the international Madrid protocol systems. They allow for a single filing application and registration in up to 113 designated countries.

The UK government has indicated that all property rights in existing EU trademarks and registered community designs will continue to be protected and enforceable in the UK as an equivalent UK based trademark or design.

Businesses which have applications for EU trademarks or community designs ongoing at the date of Brexit will have a period of nine months to apply in the UK for the same protections, retaining the priority date for the original EU application.

The UK government has indicated that it will work with the World Intellectual Property Organisation to provide continuing protection for UK  trademarks and designs filed through the Madrid systems which designate the EU.

The UK government has indicated that rights holders with an existing EU trademark or registered community design will have UK equivalent rights granted which will come into force on Brexit. This will be provided with minimal administrative burden.

The trademark or design will then be treated as if it had been applied for and registered under UK law. Accordingly, those trademarks and designs will be subject to renewal in the UK and may form the basis for proceedings before the UK courts and the Intellectual Property Office Tribunal. They will be independent of the EU right.

Brexit may have implications in relation to the exercise of rights by UK businesses organisations in respect of EU trademarks and community designs. They may be obliged to have EU representatives to act on their behalf.

Unregistered Community Designs

Unregistered community designs are governed by EU regulation. It protects a range of design features including two and three-dimensional aspects. The EU unregistered design is separate from the domestic UK design right which gives 15 years of protection.

The UK government has indicated that all existing unregistered community designs existing at Brexit will continue to be protected and enforceable in the UK for the remaining duration of the right. It has indicated that it will also create a new unregistered design right in UK law mirroring the characteristics of the unregistered design. Those UK under® rights which exist at Brexit will continue to be protected, and the UK unregistered right will continue to exist for the signs first disclosed in the UK.

In the case of unregistered rights, the existing position will continue namely that the rights exist by qualification under the statutory terms and that no specific registration is required

Patents

Most patent protection in the United Kingdom is under domestic law. There is a unified patent Court and unitary patent which may be affected by Brexit.

Existing patent rights and licenses in force on Brexit will largely continue. EU supplementary protection certificates will be re-enacted and provide for under UK law.

The unified patent court and the unitary patent have been established between 25 EU countries for the purpose of streamlining the enforcement of patents. Is intended to commence operation although it is unclear whether this will happen before Brexit. It has not yet been ratified by Germany. If it comes into force before Brexit, the UK will seek to remain within the unified patent court and unitary patent system.

UK businesses should be able to use the unified patent Court and unitary patent to protect their inventions within the EU contracting countries. In the UK businesses may protect their inventions through national patents from the non-EU European Patent Office and UK patents,  through the UK courts

Infringement which takes place in the EU will still be subject to the jurisdiction of the unified patent court. EU businesses may not be able to use the unified patent court to protect their inventions within the UK but must apply for domestic UK rights.

Geographical Indications

The EU has a stand-alone system of protection of geographical indications. The UK intends to establish its own geographical indications scheme after Brexit mirroring the EU scheme. The protections enjoyed by UK GI producers would be given UK status. EU producers may apply for UK GI status. It is intended to publish guidance in 2019.

The UK expects to introduce a new UK logo for geographical indication products to replace the EU logo.

After Brexit current UK geographical indications are likely to continue to be protected by the EU scheme. If this is not the case, the UK government advises holders and prospective holders to submit applications to the EU Commission as third country producers. Alternatively, they may consider protection by applying for EU collective marks, or EU certification marks granted by the EU intellectual property office either directly or through the World International Property Organisation system.

The UK is working with global partners to replicate EU free trade agreements including recognition and protection of UK geographical indications of origin.

Exhaustion of Rights

The UK is currently party of the EEA exhaustion of rights principle by which intellectual property rights, including the right to control the distribution of a protected product, applies (only) to the point it has been lawfully placed on the market in an EU (or other EEA) territory with the consent of the rights holder.

The UK has indicated it will continue to recognise EEA regional exhaustion regime after Brexit so that goods imported from the EU / EEA into UK which have been lawfully marketed in the EU /EEA may be imported without the assertion of further intellectual property rights.

Copyright

The UK and EU are parties to the main international treaties on copyright and related rights. EU law also supports significant elements of copyright protection on an EU wide harmonised basis. They include special protections for

  • database rights
  • portability of online content such as Netflix country of origin protection in respect of satellite broadcast
  • orphan works rules
  • collective management of copyright

After Brexit, some of the above rights may not be available to UK businesses nationals or residents depending on their particular terms. In particular, the may be no UK obligation to provide database rights, portable online content access protection for orphan works and collective management.

It may be necessary for some instances for UK owners seeking to rely on such rights to rely on other alternative rights or seek participation in an EU mechanism.

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