IP Rights in the EU & Brexit

The European Commission has sought to clarify what the post Brexit situation will be through the publication of a range of sectorial Brexit Preparedness Notices. Firms are encouraged to review the Notices on IP matters EU trademarks & designs, Supplementary Protection Certificates (19/06/2018 update) and Plant Variety Rights and consider relevant actions that may be required to prepare for Brexit and mitigate its impact on their business.

The European Commission has also released a publication in the field of Customs Enforcement of Intellectual property rights.

Also published by the EUIPO General additional Guidance for Right Holders and Representatives and Communication No. 2/2019 on the impact of the United Kingdom’s withdrawal from the EU on certain aspects of the practice of the Office.

In addition, as part of its preparations for the United Kingdom’s (UK) departure from the European Union (EU) the UK Government has published a series of technical notices aimed at providing guidance and information for businesses in the UK on the consequences of BREXIT for particular sectors of the economy.

Changes to Trade Mark law after Brexit (EUTMs)

Changes to EU & International Designs after Brexit

Protecting geographical food and drink names after Brexit

Changes to the SPC and Patent law after Brexit

Exhaustion of IP rights and parallel trade after Brexit

Changes to Copyright Law after Brexit

While these notices are principally directed at UK businesses, they do include information on what changes the UK Government will make in the area of intellectual property and business regulation. In that regard they will assist Irish business interests in understanding the implications of BREXIT for obtaining IP protection in the UK and also for maintaining EU-wide IP rights in the UK after Brexit.

The following is a summary of relevant information relating to Brexit issues on Trade Marks, Designs, Patents/Supplementary Protection Certificates and Copyright.

TRADE MARKS AND DESIGNS

Registered trade marks and registered designs are the most harmonised forms of IP rights in the EU, which means they will be the most affected by Brexit. Irrespective of whether there is an agreed transitional period or not, after Brexit, existing EU registered trade marks (EUTMs) and designs (RCDs) will no longer cover or have protection in the UK.

Businesses, organisations or individuals that have applications for an EU trade mark or Community design which are ongoing at the point of the UK’s exit from the EU will have a period of nine months from the date of exit to apply in the UK for the same protections, retaining the date of the EU application for priority purposes. This means that for a period of nine months from exit, the government will recognise filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application. Applicants re-filing under the same terms for a UK equivalent right, will be required to use the normal application process for registered trade marks and registered designs in the UK and will need to meet the cost of refiling the application in accordance with the UK application fee structure.

Businesses, organisations or individuals with an existing EU trade mark or registered 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 new UK right will be provided with minimal administrative burden. The trade mark or design will then be treated as if it had been applied for and registered under UK law. This means that these trade marks and designs:will be subject to renewal in the UK;can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal;can be assigned and licensed independently from the EU right.

UK Trade Mark Attorneys on the Irish register.

Section 86(1)(a) and (b) of the Trade Marks Act 1996 (as amended) inter alia entitles any person who resides in the State or an EEA state or has a place of business in the State or in an EEA State to be eligible to be a registered trade mark agent. However, when the UK leaves the EU, persons who do not meet the requirements of Section 86(1) (a) and (b), may cease to be eligible to be registered.

UK based Trade Mark Attorneys providing patent agent services in Ireland on a cross border basis.

When the UK leaves the EU, persons established in the UK and qualified under UK law to act as a trade mark agent in the UK, and who have notified the Controller in accordance with the Services Directive [1] and Section 85(4A) of the Trade Marks Act 1996 (as amended) of their intention to carry on the business of a trade mark agent for others in connection with a trade mark, or any procedure relating to a trade mark or the obtaining thereof, will no longer be able to carry out such business on a cross border basis.

PATENTS & SUPPLEMENTARY PROTECTION CERTIFICATES(SPCS)

In a guidance note published on 24 September 2018, the UK have confirmed that relevant EU legislation (or its domestic implementation) will be retained in UK law under the EU Withdrawal Act 2018 and that the existing systems and any UK legislation supporting the existing systems will therefore remain in place, operating independently from the EU regime, with all the current conditions and requirements.

This means that the EU’s legislation on supplementary protection certificates will be kept in UK law. This law, along with the existing supporting provisions in UK patents legislation, will form the UK’s own supplementary protection certificate regime on exit.

Likewise, all other EU legislation relevant to patents and supplementary protection certificates will be kept in UK law. This will ensure UK law continues to work in respect of biotechnology patents and applications, compulsory licensing arrangements, and exceptions from infringement for the testing of pharmaceutical products.

UK Patent Attorneys on the Irish register.

Section 107(1) of the Patents Act 1992 (as amended) inter alia, entitles any person who resides in the State or an EEA state or has a place of business in the State or in an EEA State to be eligible to be a registered on the Irish patent mark agent. However, when the UK leaves the EU, persons who do not meet the requirements of Section 107(1) (a) and (b), may cease to be eligible to be registered.

UK based Patent Attorneys providing patent agent services in Ireland on a cross border basis.

When the UK leaves the EU, persons established in the UK and qualified under UK law to act as a patent agent in the UK, and who have notified the Controller in accordance with the Services Directive [1] and Section 106 (3A) of the Patents Act 1992 (as amended) of their intention to carry on the business of a patent agent for others in connection with a patent, or any procedure relating to a patent or the obtaining thereof, will no longer be able to carry out such business on a cross border basis.

CROSS BORDER COPYRIGHT

There is a body of EU law on copyright and related rights that goes beyond the provisions of the various international treaties on copyright, which include several cross-border copyright mechanisms. These mechanisms are unique to the EU and provide reciprocal protections and benefits between EU member states. They include:

Sui generis database rights under the Database Directive[2]
Portability of online content service under the Portability Regulation[3]
Country-of-origin principle for copyright clearance in satellite broadcasting under the Satellite and Cable Directive[4].
Orphan works (works without documented owners) copyright exception under the Orphan Works Directive[5]
Collective management of copyright licensing bodies under The Collective Rights Management (CRM) Directive[6]
Cross-border transfer of accessible format copies of copyright works under the Marrakesh Directive[7]

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.