3 minute read • published in partnership with FBCMB
Manufacturers face new challenges if they want to protect their IP rights after Brexit
For many businesses, intellectual property protects more than just an idea or a concept – it protects assets that may be integral to the core services of the business and its overall long-term viability. But the way that protection is afforded will change after Brexit and it’s time to start planning for what might lie ahead. Peter Wilding, Brexit Director at FBC Manby Bowdler looks at some of the issues.
At the moment, both EU Trade Marks and Community Designs (registered and unregistered) are granted by the EU Intellectual Property Office (EUIPO) and are governed by EU directives and regulations.
An EU Trade Mark provides protection throughout the whole of the EU by means of a single, unitary registration, offering trade mark proprietors cost-effective protection in 28 different countries.
There are two types of design protection in the EU – Registered Community Designs (RCDs) which are obtained by filing an application at the EUIPO and Unregistered Community Designs (UCDs) which automatically come into effect as soon as a novel product is made available in the EU.
The UK Intellectual Property Office has now confirmed that it will protect the rights of trade mark and design holders, even in the event of a ‘no deal’. As such, all existing registered EUTMs and RCDs will be automatically granted an equivalent UK right. This will involve an automatic ‘cloning’ of the existing registration, at no cost to the right holder.
However, pending applications will need to be re-filed within a 9 month period.
If no EUTM or RCD application is filed on Brexit day, separate EU and UK applications will need to be filed directly. If you have a pending EUTM or RCD application on Brexit day it will need to be re-filed in the UK within the following 9 months.
Although UCDs are free, and come into effect automatically, they offer a shorter term and more limited form of coverage compared to RCDs. That said, they are useful rights, and provide pan-EU protection instead of, or alongside, RCDs.
It is worth noting that there is also an unregistered UK Design Right, which is similar to the UCD, but has a longer term (up to 15 years compared to 3). Therefore, it may seem that loss of the UCD may not pose a problem. This would be wrong.
Aside from the term of protection, the unregistered UK Design Right differs from the Unregistered Community Design right in so far as the former does not cover ‘surface decoration’. Therefore, the loss of UCD would leave designers of novel surface decoration (who choose not, or are unable, to file a registered design) exposed.
So if a UCD subsists on Brexit day, the UK will continue to recognise the right, such that it is protected and enforceable in the UK for its entire term. If the UCD does not yet subsist on Brexit day, newly generated UCDs will not cover the UK after this date. The UK government intends to create a supplementary unregistered UK Design Right which will mirror the UCD’s coverage of surface decoration.
European and UK Patents are not governed by EU law. The European Patent Convention (EPC) is a non-EU agreement, and the European Patent Office (EPO) is a non-EU body. As such, with respect to patents, it’s “business as usual” for the time being at least.
Across intellectual property law, a no deal Brexit would, in the longer term, provide some scope for divergence from the EU’s legislation and the case law of the European Court of Justice.
All stakeholders should be aware of the impact of Brexit for transactional terminology, including in respect of intellectual property.
Existing documents, including licences, distribution agreements and other transactional arrangements, should be audited to identify those in which unclear or inappropriate terminology is used.
The parties should consider seeking a suitable clarification agreement now. For new agreements, care must be taken with geographical terms, for example listing by name the countries covered by the agreement, not simply the “EU”.