On 29 March 2019, the UK is scheduled to leave the EU. Negotiations are ongoing between the UK government and EU regarding their post-Brexit relationship.
If these negotiations are not concluded by the exit date, the UK will leave without a deal (i.e. a ‘no deal Brexit’). In order to allow businesses and citizens to plan for this possibility, the UK Government issued technical notices on the 24 September 2018 setting out the position regarding IP rights in a no deal scenario. The main points to note are:
- All existing registered EU trade marks will continue to be protected and enforceable in the UK by virtue of an equivalent UK trade mark (which will be created by the UK Intellectual Property Office).
- Owners will be notified that a new UK right has been granted. Any owner that may not want to receive a new comparable UK registered trade mark will be able to opt out.
- Owners of pending EU applications will have 9 months from the date of exit to apply in the UK for the same protection, retaining the date of the EU application for priority purposes.
- The new UK right will be provided with minimum administrative burden.
- The UK trade mark will then be treated as if it had been applied for and registered under UK law.
- The Government will work with the WIPO to provide continued protection in the UK after 29 March 2019 for trade marks filed through the Madrid/International system and which designate the EU , including seeking practical solutions for pending applications.
- Provision will be made regarding the status of legal disputes which are ongoing before the UK courts. More information on that will issue closer to exit.
- The scheme described above to maintain protection in the UK for existing and pending EU registered trade marks will apply also to registered Community designs;
- All existing unregistered Community designs will also continue to be protected and enforceable in the UK for the normal period of protection;
- A new supplementary unregistered design right will be established in the UK for new designs that are disclosed after Brexit – this will ensure that the UK provides unregistered design protection exactly mirroring the scope of the unregistered Community design right.
- A new UK Geographical Indication (“GI”) scheme will be created for the UK.
- UK producers who currently have EU GIs will be automatically transferred into the UK scheme and will obtain UK GI protection.
- Unlike the position with EU trade marks and designs, the UK does not plan to automatically opt in EU producers who own EU GIs.
- It is not certain that the EU will maintain the existing EU GI protection for UK producers.
- Owners of GIs are advised to review whether seeking additional protection under, for instance, collective marks may be advisable
Exhaustion of rights
- For the moment, the UK will continue to recognise European Economic Area-wide exhaustion of relevant IP rights. That will mean that, as now, goods placed on the market anywhere in the EEA will continue to be freely imported into the UK.
- Conversely, the EU’s position looks likely to be that it will not continue to apply EEA-wide exhaustion. Businesses that export goods from the UK to the EU, after Brexit, may need to consider the IP implications and, where necessary, seek permissions from relevant IP owners.
- The UK is currently conducting policy work to establish what its long term position will be on this issue.
Broadly, the UK Government’s policy on all IP rights simply reflects what has long been anticipated in the IP community and aims to give comfort to proprietors of EU IP rights that their rights in the UK will not be substantively affected by Brexit. These plans are also similar to what the UK aims to do even where agreement with the EU is reached. There are nevertheless still some details of the planned schemes to be worked out and we will continue to monitor progress of the necessary legislation.
Please contact your usual CSY adviser if you have any questions about any of these issues.