When the Brexit ‘transition period’ ends, it will have some significant implications for IP rightsholders across trade marks, designs, copyright and domain names.
The following analysis looks at the consequences of the UK having left the EU on 31st January 2020 but subject to the transition or ‘implementation’ period set out in the Withdrawal Agreement negotiated by the Johnson government with the EU. During the transition period the Withdrawal Agreement (and the UK Withdrawal Acts implementing it) provide for EU law to continue to apply in the UK as if the UK is still a Member State, so nothing has yet really changed. It is at the end of the transition period that the full legal implications of the UK leaving the EU take effect.
The transition period is expected to end at 11pm on 31st December 2020, as this is the date and time set in the Withdrawal legislation, and the Government has categorically ruled out any further extensions. This is therefore the date referred to below from which key changes are expected to take place. There is a technical possibility, however – which would require UK legislation and the agreement of the EU - that the transition period end date could be pushed back (for example, were the Government and EU to decide that the Covid-19 pandemic justified a change in policy). If that were to occur, we will update these pages to reflect the potential consequences.
- While national UK trade marks will be unaffected, from the end of the transition period the territorial coverage of EU trade marks (EUTMs) will no longer include the UK.
- The UK government is putting in place a system automatically to provide alternative UK protection (called ‘comparable UK trade marks’) for those who have current EUTM protection in the UK and will lose it as a result of Brexit
- To ensure that the protection provided is the same as would have been provided by the EUTM, comparable UK trade marks will have the same filing date, priority and UK seniority as the EUTM, and will be subject to any licence or security interest registered against the EUTM; any use of the EUTM anywhere in the EU will also count as use of the comparable UK trade mark up until the end of the transition period
- Until the end of the transition period, EU trade mark protection continues unaltered in the UK
What are the key changes and what actions can be taken?
- UK businesses will still be able to own existing EUTMs and apply for new ones, but once the transition period ends on 31st December 2020 they will only provide protection in the remaining 27 Member States of the EU
- Holders of existing EUTMswill automatically be granted ‘comparable UK trade marks’ on the UK register from 1st January 2021, to take the place of the UK coverage of the EUTM that is being lost when the transition period ends; similar ‘comparable trade marks (IR)’ will be created for international trade mark registrations designating the EU.
- However, applications for EUTMs still pending at the end of the transition period will not automatically generate an application for a comparable UK trade mark. Applicants will instead be given a nine month grace period in which to apply for a corresponding UK trade mark
- Action:Rightsholders with pending EUTM applications when the transition period ends should ensure that they apply for a comparable UK trade mark within the nine month grace period to retain the earlier filing date of the EUTM application
- Action: Those applying for new UK trade marks in the nine months after the end of the transition period should watch out for the potential emergence of UK comparable trade mark applications based upon pending EUTM applications, which will potentially take priority
- The entitlement for UK-qualified/based lawyers & attorneys to represent parties before the EU Intellectual Property Office (EUIPO) will be very limited after the transition period ends.(There is one very specific exception to this - existing UK representatives will be able to continue to act in applications and proceedings that are already under way when the transition period ends, for as long as those applications and proceedings are ‘ongoing’.)
- The UK Government has decided – for the time being - not to impose a reciprocal requirement that only UK representatives be used in new UKIPO procedures post-transition, but is considering requiring that all new applications provide an Address for Service in the UK or Channel Islands (this requirement will not apply to pending applications, nor to comparable UK trade marks or designs, at least until 3 years after their grant).
- Action: EUIPO - Check that you have appropriate representation in place, as solely UK-based firms will not be able to act before the EUIPO. Our Dublin office and Irish-qualified attorneys mean that Lewis Silkin will still be fully able to file and prosecute, and conduct litigation, in respect of EUTMs
- Action: UKIPO – Brand-owners using non-UK based representatives are very likely to have to ensure that a UK Address for Service is provided when making new UK applications and conducting resulting UKIPO proceedings. As a UK-based law firm, we are ready to act as your agent, and are able both to advise and to act in any litigation in respect of UK rights
- For the 4 working days or so after the end of the transition period on 31st December 2020, the UKIPO is likely to announce a period of ’systems maintenance’ to allow for the processing of the changes resulting from Brexit, in particular the grant of comparable UK trade marks and re-registered UK designs (see below).
- See also below regarding Exhaustion of IP Rights and IP Litigation
- For further information see: here and here (UK Guidance), here (EU Brexit Notice to Stakeholders) and here (EUIPO Guidance on Rights and Representation)
Businesses established in the UK but not in the EU will not be eligible to apply for new .eu domains once the transition period comes to an end; and their existing .eu domains will be subject to withdrawal and revocation.
What are the key changes and what actions can be taken?
- Businesses established in the UK but not in the EU, and UK-resident individuals who are not EU citizens, will not be eligible to register new .eu domain names; this change applies from the end of the transition period
- The existing .eu domain names held by such businesses and individuals will be subject to withdrawal and revocation. Based upon the transition period ending on 31st December 2020, EURid (the registry manager for .eu domains) has announced the following timetable:
- 1st October 2020 – notification to affected UK-based businesses and individuals that their .eu domains are subject to withdrawal or revocation if they cannot by 31st December 2020 submit new contact data to put on the register demonstrating a continued legal basis to hold such domains (e.g. a business may be able to do so by showing that it is also legally established in a continuing EU Member State; an individual may be able to show EU residence or citizenship)
- 1st January 2021 - .eu domains withdrawn (and will no longer function so as to support email or website services)
- 1st January 2022 – the withdrawn .eu domains are revoked and become available to other registrants
- Action: If possible, contact data on the register should be changed to demonstrate a relevant establishment or residency/citizenship in a continuing EU Member State, to keep .eu domains valid
- Action: Those who will be unable to demonstrate a relevant establishment or residency/citizenship in the EU should urgently put in place plans for migration of any key services and websites reliant upon the .eu domain registrations to different domains
- For further information see: here (UK Guidance); here (EU Brexit Notice to Stakeholders) and here (Brexit notice from EURid, the registry manager of .eu domains)
- UK registered designs (and for UK-based businesses, UK unregistered design rights too) are unaffected by Brexit, but their EU counterparts – Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs) – will no longer give protection in the UK after the end of the transition period
- The UK is putting in place comparable systems of design protection to run in parallel with the EU systems of Community Designs, providing automatic protection in the UK for those who will lose their current Community design protection in the UK
- Until the end of the transition period, EU design protection continues unaltered in the UK
What are the key changes and what actions can be taken?
- Holders of existing Registered Community Designs will automatically receive a comparable ‘re-registered design’ recorded at the UK registry from 1st January 2021
- Applications for RCDs still pending at the end of the transition period will not be automatically turned into applications for the comparable UK re-registered design:
- Action: Holders of pending RCD applications will have a nine month priority window after the transition period ends in which to apply for a corresponding UK re-registered design; the detailed arrangements are very similar to those for EU Trade Marks (see above)
- Action: Those applying for new UK design registrations in the nine months after the transition period ends should watch out for the potential emergence of UK re-registered designs based upon pending RCD applications, which will potentially take priority
- The situation regarding Representation before the EUIPO and Address for Service requirements at the UKIPO - discussed above in respect of trade marks - applies equally to applications and proceedings in relation to RCDs and UK registered designs
- Holders of existing Unregistered Community Designs will automatically, when the transition period ends, receive continuing protection in the UK via a ‘Continuing Unregistered Design’ for the remainder of the three year term of protection attached to the UCD. The UK will also create a new ‘Supplementary Unregistered Design’ to give similar protection in the UK to that which the UCD provides in the EU, from 1st January 2021 onwards
- Action: After the transition period ends, those who rely upon unregistered design rights (whether EU or UK) must consider very carefully when and where to first disclose designs: initial disclosure in the ‘wrong’ place may destroy novelty and prevent protection in other territories
- From the end of the transition period, only residents of and businesses formed in the UK and other specified qualifying countries will be entitled to hold the ‘old-style’ UK unregistered design right, and disclosure in the EU will no longer create such UK design rights
- Action: Non-UK businesses will still be able to benefit from unregistered design protection in the UK, but only via the Supplementary Unregistered Design described above rather than the ‘old-style’ UK unregistered design right
- See also below regarding Exhaustion of IP Rights
- For further information see: here,here and here (UK Guidance), here (EU Brexit Notice to Stakeholders) and here (EUIPO Guidance on Rights and Representation)
Copyright & Related Rights
- There will be relatively few changes to the fundamentals of UK copyright law given its national, territorial nature
- Most of the changes that EU legislation and EU Court of Justice case-law have made to UK copyright law over the years are likely to persist after Brexit, at least for the foreseeable future, but there are exceptions which are discussed below
- The most important impacts of Brexit will be on those elements of copyright & related rights which required EU membership and reciprocity of protection for their existence, such as Database rights and the Satellite broadcasting ‘country-of-origin’ principle, etc.
- The Government has indicated that ‘it has no plans’ at present to transpose into UK law two new EU Directives on Copyright (further details below)
- As with other IP rights, the copyright and related rights protections that rely upon EU membership continue unaltered in the UK during the transition period
- UK and EU copyright law may gradually diverge after Brexit, either due to legislative changes or developing case-law (see the section below on IP litigation and EU Court of Justice case-law)
What are the key immediate changes and what actions can be taken?
- EU Database rights- UK citizens, residents & businesses will no longer be eligible to receive protection in the EEA after the end of the transition period for newly created databases, although their databases already protected in the EEA at the end of the transition period will continue to have protection in the EEA for the rest of their standard duration. The UK will introduce its own version of database rights from 1st January 2021 for new databases created by UK citizens, residents or businesses, but it will provide protection only within the UK
- Actions: Businesses that also have establishments in the EU may be able to rely upon them for EU database right protection for databases created after the end of the transition period. It may also be possible to rely upon copyright protection for databases where relevant originality can be shown
- Satellite broadcasting ‘country-of-origin principle’, sometimes also called the ‘one-stop shop’ – From the end of the transition period, broadcasters based in the UK will no longer benefit from the EU rules that mean copyright clearance only needs to be undertaken in the Member State from which satellite/cable signals are introduced
- Actions: UK-based broadcasters providing services to EU customers may from the end of the transition period have to clear rights separately in each Member State that their signal reaches; but it may be possible to establish an EU base from which broadcasts will continue to receive the benefit of the ‘country-of-origin principle’ or ‘one-stop shop’
- Online content portability – From the end of the transition period, UK-based service providers will no longer benefit from ‘one-stop shop’ clearance provisions regarding their subscribers who temporarily move within the EU, while UK-residents will no longer benefit from portability rights when travelling in the EU
- Actions: Service providers who want to continue to offer content portability to subscribers travelling between the UK and the EEA (or vice versa) will, after the transition period comes to an end, need to seek permission from the owners of the content provided in the relevant territories
- Recent EU Directives on (i) Copyright in the Digital Single Market and (ii) Copyright relating to Online Transmissions and Retransmissions of TV and Radio content - The date by which EU Member States are obliged to have implemented these two Directives is 7th June 2021. If the transition period ends on 31st December 2020 as expected, then the UK will not be obliged to implement their provisions into UK law, and the Government has indicated that it has no immediate plans to do so. (However, if the transition period were for some reason extended to beyond 7th June 2021, then the UK would be obliged to implement these Directives.)
- In Brief: other areas of copyright and related rights in respect of which UK-based organisations may be affected by Brexit after the transition period comes to an end: Exhaustion of IP Rights (see separate entry below); Collective rights management (obligations upon EU-based collecting societies to collaborate for multi-territorial licensing); Orphan works (mutual recognition of orphan works designated by cultural institutions across the EU); Satellite decoder cards (the government has announced an intention to criminalise the use of decoder cards/devices intended for use in the EU rather than the UK); Access of visually-impaired people to copyright works
- For further information see: here (UK Guidance), here (EU Brexit Notice to Stakeholders), here (EU Directive on Copyright in the Digital Single Market ) and here (EU Directive on Copyright relating to Online Transmissions and Retransmissions of TV and Radio Content)
Exhaustion of Intellectual Property Rights
- Under EU law, once IP-protected goods have been put on the market anywhere in the European Economic Area (EEA) by, or with the consent of, the IP-owner, the IP-owner can no longer prevent those same goods from being re-sold anywhere in the EEA: so their IP rights in those goods are said to have been ‘exhausted’
- During the transition period, the UK remains fully part of the existing EEA-wide exhaustion regime. But when the transition period comes to an end, the UK will no longer be treated as being in the EEA, and so the fact that IP-protected goods have been put on the market in the UK will not exhaust the rights of IP-owners in the EEA
What are the key changes and what actions can be taken?
- Once the transition period comes to an end, the rights of IP-owners in the EEA will no longer be exhausted by goods being put on the market in the UK, and so their rights will still be enforceable against such goods if they are ‘parallel’ imported from the UK into the EEA
- Action: Such exports from the UK into the EEA are likely to need a licence from the rights-owners in the EEA; for some businesses, it may make more sense to conduct such cross-border buying and selling from a base in a continuing EEA member country (rather than the UK) after the transition period ends
- By contrast, the UK has indicated that it will (at least for the time being) continue to recognise EEA exhaustion after the implementation period end date; so the rights in IP-protected goods first placed on the EEA market by, or with the consent of, the right holder would continue to be considered exhausted in the UK, allowing – for the time being – continued ‘parallel importation’ from the EEA into the UK
- For further information see: here (UK Guidance)
- Brexit will have minimal effect on patents in the United Kingdom. Thus, the UK will remain part of the European Patent Organisation (EPO) after exiting the EU, because the EPO is not a European Union institution. European Patent Attorneys based in the UK will continue to represent their domestic and overseas clients before the European Patent Office, and the UK can continue to be designated in European patent applications. Similarly, the UK’s participation in the International (PCT) patent system will be unaffected, with UK patent protection continuing to be available via the PCT through UK national and EPO regional designations
- Regarding the Unified Patent Court and Unitary Patent system, the UK government has now withdrawn its ratification of the UPCA meaning that the UK will not be taking part in the system. The UPC start date is still uncertain, being dependent upon ratification by the German government, following the successful challenge in the German constitutional court to the legislation required to ratify the UPCA. The German government will need to propose new legislation to ratify the UPC, which will again be subject to possible further constitutional challenges
- Supplementary Protection Certificates for pharmaceutical and plant protection products granted prior to the end of the transition period will be unaffected, and applications for SPCs pending at the UK Intellectual Property Office will be treated as before with no need to refile. After that, SPCs will be applied for in the same way as before: the product in question must be protected by a patent which is in force in the UK and covered by a marketing authorisation which allows the product to be sold in the UK at the time of applying. The marketing authorisation may be granted by the Medicines and Healthcare products Regulatory Agency, or the European Medicines Agency. Authorisations from the EMA will be converted to equivalent UK authorisations at the end of the implementation period
- For further information see: here (UK Guidance)
IP Litigation and EU Court of Justice Case-law
- After the end of the transition period, UK courts will no longer be able to adjudicate on EU trade marks or designs (except in certain proceedings that are already under way) and will not be able to issue EU-wide injunctions.Likewise, pan-EU injunctions granted by EU courts in post-transition period proceedings will not apply to the UK.
- Pan-EU injunctions granted by EU Courts before the end of the transition period will continue to apply to comparable UK trade marks and designs after the end of the transition period
- Any cases relating to EU registered trade marks or designs ongoing in the UK courts on 1 January 2021 will continue to be heard as if the UK were still an EU Member State, but remedies granted by the court will apply to the comparable/re-registered UK rights only
- Action: Rightsholders with ongoing litigation should assess whether they will be able to obtain their desired remedies through existing proceedings. Those seeking an injunction in the UK after the end of the transition period will need to apply to the UK courts, even if proceedings are also ongoing in an EU Member State. Likewise, those seeking an EU-wide injunction after the implementation period end date will need to issue proceedings in an EU Member State, even if UK proceedings are also ongoing
- After the transition period ends, UK courts will no longer be able to make references to the Court of Justice of the European Union (CJEU) for interpretation of IP legislation and other EU law that is retained in UK legislation. If the UK courts have referred a question to the CJEU and this question is still pending at the end of the transition period, it will remain before the CJEU until its resolution. Other than these pending referrals, UK courts will not be required to follow CJEU judgments given after 31st December 2020, although they may take CJEU case law into account if they choose to
- On the other hand, CJEU case-law handed down before the end of the transition period becomes part of UK law (called ‘retained EU case-law’) under the Withdrawal legislation, and thus generally remains binding upon UK courts (but see the next paragraph for an exception). Prior rulings of higher courts in the UK on points of EU law (including regarding retained EU case-law) also remain binding upon lower courts in the UK under the usual rules of precedent.
- In October 2020 - having consulted on the subject - the UK Government announced that the UK Supreme Court, the England & Wales Court of Appeal, and the appellate courts of similar standing in Scotland and Northern Ireland, will all be given the power to depart from such ‘retained EU case-law’, from the end of the transition period. This is intended to further the Government’s stated policy aim of ‘enabling retained EU case law to evolve more quickly’ so as to reflect the ‘new context’ of the UK having departed the EU. The relevant courts will apply the same test in deciding whether to depart from retained EU case-law as the UK Supreme Court already applies when deciding whether to depart from its own previous decisions – namely whether “it appears right to do so” in the circumstances. The related jurisprudence indicates that in the past the Supreme Court would only depart from its previous decisions “rarely and sparingly”, for example if they would produce “serious anomalies”, “results which were plainly unsatisfactory” or “unforeseen serious injustice”. It remains to be seen how such considerations will be applied in the context of assessing retained EU case-law (and by the Court of Appeal as well as the Supreme Court) – the Government decided not to augment the test with a specific list of relevant factors or considerations to be taken into account
- A proposal to extend the ‘power to depart from retained EU case-law’ also to the High Court was rejected on the grounds that it might introduce too much uncertainty and lead to an increase in litigation. In a field such as Intellectual Property, where most disputes involve issues that relate to legislation and case-law that have an EU basis, it nevertheless seems likely that the potential for retained EU case-law to be departed from at Court of Appeal or Supreme Court level will lead to greater uncertainty in establishing the “correct” legal position on any given point, and thus the potential for more EU points to be argued – and subsequently appealed – in the course of UK IP litigation
- For further information see UK Guidance: here and here; Outcome of Consultation on UK courts’ departure from retained EU case-law here
Customs Enforcement of Intellectual Property Rights
- Under EU law, IP rights owners can ask the customs authorities in Member States to take action in respect of goods suspected of infringing an IP right.A Union ’application for action’ by customs authorities (AFA) can be made to the authorities of a single Member State but request action also by authorities in one or more other Member States.Until the end of the transition period UK customs are still part of these arrangements
- Once the transition period comes to an end, such Union AFAs can no longer be submitted via the UK customs authorities; moreover AFAs already submitted/granted via the UK before the end of the transition period – while remaining active in respect of UK customs, which will have procedures that mirror the EU system - will no longer be valid in the EU
- Action: a fresh AFA will need to be submitted in a continuing Member State for the Union customs enforcement measures to continue outside the UK.
- An AFA submitted before the end of the transition period through the customs authorities of a non-UK Member State and which requests action by the UK authorities amongst others will remain active for the continuing EU customs authorities but not for the UK
- Action: a fresh AFA will need to be submitted to the UK customs authorities for enforcement measures to continue in the UK
- Special rules apply to customs enforcement under the Northern Ireland Protocol
- For further information see: UK Guidance here; EU guidance here