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Intellectual property after Brexit
This guidance sets out the implications for the protection and enforcement of intellectual property (IP) rights in the UK and EU from the end of the Brexit transition period.
- is relevant for UK lawyers and their clients seeking to protect and/or enforce intellectual property rights in the UK and EU from 1 January 2021
- takes account of the UK-EU Trade and Cooperation Agreement signed on 24 December 2020
During EU membership, the law governing IP was, to a large extent, harmonised across the EU, with certain IP rights enjoying pan-EU coverage.
The UK-EU Withdrawal Agreement (WA) subsequently converted pre-existing EU IP rights into comparable UK ones (with the exception of patents), with the new UK rights taking effect from the end of the transition period.
As of 1 January 2021, the EU and UK systems became fully separate with automatic reciprocal arrangements falling away.
The UK-EU Trade and Cooperation Agreement does address this area of law, with a primary focus on affirming current standards of protection and enforcement for IP rights, while also providing a basis for future cooperation in this field.
As expected, the agreement does not grant rights of representation before the EU Intellectual Property Office (IPO) (other than in ongoing proceedings) or before the Court of Justice of the European Union.
The UK has remained a member of the European Patents Convention, but will not participate in the Unified Patent Court (UPC). On 20 July 2020, the UK gave notice of its withdrawal of the ratification of the agreement on a UPC.
Further, Amanda Solloway (parliamentary under secretary of state and minister for science, research and innovation) gave a written statement in the House of Commons on the matter stating that participating in a court which applies EU law and is bound by the CJEU was inconsistent with the UK government's aims.
The UK-EU future relationship and IP
Trade marks and designs
EU trade marks and registered community designs (RCDs) that were registered before the end of the transition period are now recognised as new comparable UK rights.
For these comparable UK trade marks, the original EUTM filing date and original priority will be retained, but the right is now a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM (from 1 January 2021).
The UK IPO has issued further guidance for new UK trade marks in relation to the registration process, renewals, opt-outs and numbering.
Existing EU trade marks will remain protected within EU member states and UK businesses can still apply to the EU IPO to register a new EU trade mark. However, proceedings before the EU IPO based on UK rights (such as UK trade marks or passing off) have now been automatically closed.
Similarly, RCDs that were re-registered with the UK IPO under the Withdrawal Agreement will retain their original filing and priority dates.
The re-registered designs are likewise fully independent UK designs that can be challenged, assigned, licensed or renewed separately from the original RCD (from 1 January).
Businesses, organisations or individuals that have ongoing applications for an EU trade mark or RCD at the point of the UK’s exit from the EU will have a period of nine months from the end of the transition period to apply in the UK for the same protections, if they want to retain the date of the EU application for priority purposes.
Additionally, new comparable UK rights have been created by the UK IPO for all international trade marks and designs designating the EU, effective from 1 January 2021. These rights will be outside of the Madrid and Hague systems.
Any unregistered community designs (UCDs) arising before the end of the transition continue to be protected in the UK as new supplementary rights for the remainder of their three-year term (Article 57 WA). These new comparable rights came into force from 1 January 2021.
For unregistered designs disclosed in the UK from the beginning of 2021, there may be no recognition of first disclosure in the other territory, with first disclosure in the UK securing the new UK supplementary right, while first disclosure in the EU secures the UCD right.
Solicitors should consider whether clients affected by this change may wish to simultaneously disclose designs in the EU and UK to try to obtain maximum protection.
The UK-EU Trade and Cooperation Agreement commits both sides to maintaining certain standards of protection for trade marks and designs taking account of relevant international conventions that have been ratified by both sides.
The standards of protection are largely typical for EU FTAs and in line with current practice, with standard revocation provisions, and inclusion of protections for goods in transit to the level under existing EU law. This applies to designs as well as trade marks.
On unregistered designs, both sides commit to ensuring protection from copying for at least three years as from the date on which the design was first made available to the public in the territory of the respective party.
Copyright and broadcasting
Copyright was not addressed in the Withdrawal Agreement as continued protection for copyright works between the UK and EU is assured by international treaties on copyright.
These conventions ensure ongoing protection beyond the end of the transition period for covered works.
The UK-EU Trade and Cooperation Agreement confirmed that cross-border copyright arrangements that are unique to EU member states – such as the EU Satellite and Cable Directive, which provides a country-of-origin principle for licensing of copyright material in cross-border satellite broadcasts – ceased to have effect as of 1 January 2021.
This includes cross-border portability of online content services, copyright clearance for satellite broadcasts, and the orphan works exception.
The UK IPO has produced further guidance on the implications for copyright law.
Access to the European Patent Office remains because the European Patent Convention, a non-EU international treaty, is the governing framework and the UK has remained a signatory.
As stated above, the UK will not participate in the UPC system, if it goes ahead.
Supplementary protection certificates (SPCs)
Under Article 60 WA, upon the end of the transition period, authorisations from the European Medicines Agency were converted into UK authorisations.
EU law currently provides for a six-month extension to SPCs that protect medicines that have been tested for paediatric use.
From 1 January 2021, the UK's Human Medicines Regulations 2012 determine the availability of such extensions.
In July 2019, a new manufacturing waiver was introduced by EU law to SPCs. This new EU law came into force subsequent to the Patents Regulations 2019 being made in April 2019 therefore, the manufacturing waiver was not been fixed by those Regulations.
Following an IPO consultation and government response, the UK government laid a draft statutory instrument on 14 October 2020, the Supplementary Protection Certificates (Amendment) (EU Exit) Regulations 2020.
Geographical indications (GIs)
Article 54(2) WA states that geographical indications, designations of origin or traditional specialities which are protected in the EU on the last day of the transition period by virtue of the relevant EU rules continue to be protected in the UK.
GIs relating to products that originated in the UK are also covered by this provision.
The UK has granted protection of the stock of EU geographical indications without re-examination or re-application (Article 55 WA) to at least the same level of protection as required under the relevant EU legislation. This protection is indefinite for as long as the relevant geographical indication is protected in the EU.
The UK government laid a statutory instrument before parliament, the Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020, to provide a new legal framework for new UK GI schemes from the end of the transition period.
All UK products registered under the EU’s GI schemes by the end of the transition period remained protected under the UK GI schemes.
From 1 January 2021, producers need to apply to a UK GI scheme to protect a new product name in Great Britain.
Producers in Great Britain will first need to secure protection in the UK before applying to EU schemes.
There are three logos to mark each new UK GI:
- protected designation of origin (PDO)
- protected geographical indication (PGI)
- traditional speciality guaranteed (TSG)
International protection of UK GIs will continue from 1 January 2021 for products currently named in EU free trade agreements and EU third country sectoral agreements (provided that the UK has signed a continuity agreement).
GIs remained an area of disagreement throughout the 2020 negotiations on the future relationship.
Under the UK-EU Trade and Cooperation Agreement, both sides agreed simply to jointly use reasonable endeavours to agree rules for the protection and effective domestic enforcement of their geographical indications, with a future review now expected.
The UK implemented the EU Trade Secrets Directive by the Trade Secrets (Enforcement etc) Regulations 2018.
Under article 61 WA, it was agreed that IP rights exhausted in both territories before the end of the transition period shall remain exhausted in both territories.
From 1 January 2021, goods placed onto the UK market will not be deemed exhausted in the EEA and will require consent.
In contrast, the UK government has elected to continue with the regional EEA exhaustion regime for the time being, meaning that goods placed on the EEA market will still be deemed exhausted in the UK even after 1 January 2021.
This asymmetrical framework is expected to be reviewed in 2021, with the UK IPO carrying out a consultation on exhaustion that will close on 31 August 2021.
The UK-EU Trade and Cooperation Agreement confirmed the right of each side to set its own rules on exhaustion.
EU/EEA states were previously obliged under EU law to provide database rights (protection for database content) to UK nationals, residents, and businesses.
Under article 58 WA, database rights that existed in the UK or EEA before 1 January 2021 will continue to exist in both territories for their duration under the Withdrawal Agreement.
UK undertakings are not eligible to hold or receive database rights in the EEA in respect of databases created on or after 1 January 2021.
Those undertakings may wish to consider whether an undertaking in the EEA can hold them or whether alternative methods of protection for the database contents (such as copyright or licensing agreements) may be appropriate.
There is no mutual recognition of database rights under the UK-EU Trade and Cooperation Agreement.
Until the end of the transition period, undertakings and organisations established in the UK as well as citizens and residents in the UK were able to hold and register .eu domain names.
As of 1 January 2021, this is no longer possible if your organisation, business or undertaking is established in the UK but not in the EU/EEA or you live outside of the EU/EEA and are not an EU/EEA citizen. The European Commission confirmed this in its published guidance on .eu names following the end of the transition period.
Additionally, if you no longer meet the eligibility criteria, EU registrars (EURid) will be entitled to revoke such domain names on their own initiative and without submitting the dispute to any extrajudicial settlement of conflicts (unless they demonstrated compliance with the .eu regulatory framework by updating their registration data before 31 December 2020).
There are, however, transitional arrangements in place to ensure that non-compliant domains do not become generally available immediately.
Solicitors advising clients impacted by this change should consider suggesting that they make arrangements to ensure that their websites continue to be accessible.
Judicial enforcement of EU-wide rights
The Withdrawal Agreement provides that the existing rules on jurisdiction and enforcement will continue to apply to the territory of the UK and the EU for proceedings for infringement of EUTMs or RCDs initiated prior to the end of the transition period, regardless of when these proceedings are concluded.
All pan-EU remedies issued in such proceedings must be recognised by courts in the UK and the EU.
As of 1 January 2021, proceedings that have been commenced in a UK court do not have any pan-EU effect and, similarly, any proceedings commenced in the EU have no effect on the UK or the comparable UK right.
Customs and applications for action
Applications for action (AFAs) are important tools allowing owners of IP rights to request customs authorities across the EU to detain goods that they suspect to be counterfeit.
EU law provided for the possibility for IP right owners to submit, through the customs authorities of a single member state, an AFA also covering other EU member states or even all EU member states, where based on certain EU-wide rights.
As an English-speaking jurisdiction and due to its speed and business friendliness, many such AFAs have historically been submitted through HM Revenue and Customs, requesting customs action in other EU member states in addition to the UK.
If a rights holder filed an EU-wide AFA through the UK Border Force, this ceased to have effect outside the UK after the end of the transition period. It's now necessary to file a separate EU AFA through an EU27 customs authority.
Conversely, if a rights holder filed an EU-wide AFA via one of the EU27 customs authorities covering the UK, this ceased to have effect in the UK.
This was not impacted by the UK-EU Trade and Cooperation Agreement.
Recognition of foreign judgments
Under Article 67 WA, during the transition period, the current rules on enforcement and jurisdiction (Brussels Recast regime) will continue to apply, including to proceedings instituted before the end of the transition period.
This issue was not addressed by the Trade and Cooperation Agreement negotiations.
Consequently, from the end of the transition period, EU rules regarding the recognition and enforcement of judgments cross-border ceased to apply to the UK and national rules took effect.
The UK government has applied to accede to the Lugano Convention, which would essentially replicate the Brussels Recast regime. However, such accession requires EU agreement, which has to date not been forthcoming.
Address for service
Under the terms of the Withdrawal Agreement, there can be no requirement for a UK address for service, in relation to the comparable trade marks and re-registered designs which have been created by the UK IPO on the basis of pre-existing EU rights, for a period of three years following the end of the transition period.
However, from 1 January 2024, new proceedings launched in connection with these rights will require a UK address for service.
This follows the announcement by the UK IPO that the rules on address for service change from 1 January 2021.
For all new applications for a patent, a trade mark or a design at the UK IPO, you must have an address for service in the UK, Gibraltar or the Channel Islands. This includes new applications under Article 59 WA, claiming an earlier EU IPO filing date.
The requirement does not apply to post-registration actions to update the register or to ongoing applications.
The UK IPO changes also required a UK address for service for all new challenges and proceedings initiated from 1 January 2021, unless they relate to comparable trade marks and re-registered designs created under the Withdrawal Agreement.
This means, for example, that representatives appointed from 1 January 2021 in relation to patents must have a UK address for service. For more information, see the UK IPO's guidance on the rules and exceptions.
The EU IPO, on the other hand, has to date required an EEA address for service and will not permit UK representatives to act in new proceedings before it from 1 January 2021 (though a representative is not required for the mere filing of an EU trade mark or design).
The EU IPO has communicated how access to its representative accounts for UK-based representatives will be shut down.
The UK-EU Trade and Cooperation Agreement affirmed that both the EU and the UK have the right to require a national of the other side to designate an address for service in their own territory, without this being construed as a distortion to trade.
Practice rights for IP lawyers
UK lawyers lost rights of representation before the EU IPO from the end of the transition period, except for proceedings which are ongoing.
Rights of representation before EU courts and bodies were not expected to be covered in the negotiations on the future agreement.
The UK-EU Trade and Cooperation Agreement does contain general provisions on the provision of cross-border legal advice.
Bilateral agreements with EU member states
As explained above, IP laws are broadly harmonised at EU level.
In addition, the EU is exclusively competent to negotiate and conclude international agreements on the commercial aspects of IP under articles 3(1)(e) and 207 of the Treaty on the Functioning of the European Union.
As a result, the UK is not able to come to a bilateral agreement with member states in this area.