Protecting your Intellectual Property rights in light of Brexit

21 Jan 2021

Now that the Brexit transition period has ended, what has changed for intellectual property laws in the UK? If you had an EU registered trade mark/community design, you automatically will have been granted an equivalent UK trade mark but what about EU trade mark applications, patents and copyright works? What will happen to questions referred to the Court of Justice of the European Union from the UK courts and which courts can depart from the EU case law?

Andrew Jerrard gives a brief overview of the changes in this article. You can contact Andrew with any intellectual property queries using our contact form or call him today on 02380 820543.

What has happened to my Intellectual Property (IP) in light of Brexit?

The Brexit ‘transition period’ ended at 11pm on 31 December 2020 following the UK’s exit from the EU. During the transition period, there was no change to IP laws in the UK.

After the transition period, the same UK IP laws and system continue to apply in the UK and the EU IP system continues without the UK. Only the UK Supreme Court, the Court of Appeal and certain specialist appeal courts will be able to depart from EU case law under the law of England and Wales.

There will be no more referrals from the UK courts to the Court of Justice of the European Union (CJEU) after the transition period and the UK courts will not be required to follow CJEU decisions. The UK Supreme Court will replace the CJEU as the final court of appeal in the UK. However, references made before the end of the transition period will still be bound by the CJEU’s decision, even if the CJEU’s judgment comes after the end of the transition period.

Registered trade marks and design rights

Existing EU registered trade marks/community designs do not cover the UK after the transition period but the UK has automatically granted an equivalent national UK registered trade mark/design at no cost to the owner.

For EU trade mark/community design applications that existed at the end of the transition period, the applicant can re-file in the UK within nine months after the end of the transition period and benefit from the earlier EU filing date for their UK application. However, there is a cost for re-filing in the UK.

EU unregistered design rights

It is not clear whether a design disclosed outside of the EU can have unregistered community design rights. This question has remained unanswered for over 18 years and the CJEU is due to answer it following a referral from the UK’s Intellectual Property Enterprise Court hearing the ‘Squeezamals’ case (involving plush toy designs disclosed in Hong Kong). We therefore do not know whether designs disclosed in the UK after the transition period will benefit from an EU unregistered design right.

However, designs that benefitted from unregistered community design right protection before 1 January 2021 will continue to do so for the remainder of the 3-year term.

The UK has also created a new ‘mirror image’ 3-year ‘supplementary unregistered design’ right that may apply to designs first disclosed in the UK after the transition period. This ensures that designers will still benefit from the same design rights they had before the end of the transition period.

Designers should be careful about where and when they choose to disclose their designs to ensure valid unregistered design right protection is available in both the UK and the EU. Given the uncertainty, it may be preferable to arrange first disclosure simultaneously in the UK and the EU (and elsewhere depending on local law).

UK unregistered designs

There has been no change to the UK unregistered design right, save that designs created after the transition period by authors that are EU/EEA nationals/residents will not give rise to UK unregistered design right.

Patents

The patent system is governed by treaties and laws that sit outside of the European Union meaning there has been no change and the UK will remain a member of the European Patent System.

Copyright

The copyright regime has not changed, however the UK courts may now deviate from EU copyright law, causing copyright protection based on UK works to be treated differently in EU countries.

Database right

Databases existing in the EU/EEA before the end of the transition period continue to be protected in the UK but after the end of the transition period, only EU/EEA databases are protected in the EU/EEA and only UK databases will be protected in the UK.

 

Please contact Andrew Jerrard if you have any queries on Intellectual Property.

Author

Andrew Jerrard

Solicitor

Tags: Brexit