Intellectual property after Brexit
This guidance sets out:
- key points for the protection and enforcement of intellectual property (IP) rights in the UK and EU following the end of the Brexit transition period
- upcoming changes to address for service arrangements before the UK Intellectual Property Office (IPO)
It's relevant for UK lawyers and their clients seeking to protect and/or enforce IP rights in the UK and EU.
It takes account of the UK-EU Trade and Cooperation Agreement (TCA) signed on 24 December 2020.
When the UK was an EU member state, the law governing IP was, to a large extent, harmonised across the EU, with certain IP rights enjoying pan-EU coverage.
As a result of the UK-EU Withdrawal Agreement (WA), millions of pre-existing EU IP rights were cloned onto the UK national register.
These rights came into effect on 1 January 2021, when the EU and UK systems became fully separate with automatic reciprocal arrangements falling away.
The UK-EU TCA also addresses this area of law, but with a primary focus on affirming current standards of protection and enforcement for IP rights, while also providing a basis for future cooperation.
The UK has remained a member of the European Patents Convention, but is not taking part in the Unified Patent Court (UPC).
The UK-EU future relationship and IP
This section covers:
- trade marks and designs
- copyright and broadcasting
- trade secrets
- domain names
- judicial enforcement of EU-wide rights
- customs and applications for action
- recognition of foreign judgments
- address for service
- practice rights for IP lawyers
EU trade marks and registered community designs (RCDs) that were registered with the EU Intellectual Property Office (EU IPO) before the end of the transition period were recognised as new comparable UK rights.
From 1 January 2021, these comparable UK trade marks and designs are (except in very narrow circumstances) fully independent, national rights which have been capable of being challenged, assigned, licensed or renewed separately from the original EU trade marks or RCD.
The comparable UK rights created from international trade marks and designs designating the EU were also created as national rights, outside of the Madrid and Hague systems.
There were some errors in the cloning of rights into the UK national register, which the UK IPO is aware of and is addressing.
The UK IPO has issued guidance for new UK trade marks in relation to the registration process, renewals, opt-outs and numbering.
Existing EU trade marks and RCDs will remain protected within EU member states and UK businesses and individuals can still apply to the EU IPO to register a new EU trade mark or RCD.
However, UK applicants need an European Economic Area (EEA) address for service in certain circumstances (see address for service).
Proceedings before the EU IPO based on UK rights (such as prior UK trade marks or passing off) were automatically closed by the EU IPO, although issues relating to this and to what extent UK rights could still be taken into account for EU trade marks are pending before the EU's Court of Justice.
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.
The last of these so-called 'continuing unregistered community designs' will fall away by 31 December 2023.
The UK created a new national unregistered design right with the same characteristics as the UCD. This is called the 'supplementary design right' (given that the UK already has a legally distinct unregistered design right).
For unregistered designs disclosed in the UK since 1 January 2021, there may be no grant of right in the other territory, with first disclosure in the UK securing the new UK supplementary design 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.
Note there are legislative proposals for reform of EU design laws, which – in their current draft – remove the requirement for first disclosure of a UCD in the EEA. The UK IPO is similarly considering changes to the UK’s design laws.
The UK-EU TCA commits both sides to maintaining certain standards of protection for trade marks and designs, taking account of relevant international conventions ratified by both sides.
Copyright was not addressed in the WA as continued protection for copyright works between the UK and EU is assured by international treaties on copyright.
These conventions ensure ongoing protection for covered works, regardless of whether the creators and owners are based in the UK, the EU or elsewhere.
The UK-EU TCA confirmed that cross-border copyright arrangements 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.
Other EU-specific copyright laws that no longer apply cover:
- cross-border portability of online content services
- cable retransmission of satellite broadcasts
- 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 is not taking part in the UPC system.
The UK implemented the EU Trade Secrets Directive by the Trade Secrets (Enforcement etc) Regulations 2018.
Under article 61 WA, IP rights exhausted in both territories before the end of the transition period remain exhausted in both territories.
From 1 January 2021, goods placed onto the UK market have not been 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 are still deemed exhausted in the UK even after 1 January 2021.
In June 2021, the UK government launched a consultation on this so-called UK+ exhaustion regime and options for the UK's future exhaustion regime.
In January 2022, the UK government announced that, given the lack of data to understand the economic impact of any change to the continuing UK+ regime, there would be no changes to it for the time being. However, it continues to consider the matter.
The UK-EU TCA confirmed the right of each side to set its own rules on exhaustion.
You can only register or hold .eu domain names if you are:
- an EU/EEA citizen, independently of where you live
- not an EU/EEA citizen but resident in the EU/EEA
- an organisation, business or undertaking that is established in the EU/EEA
The WA 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 EU trade marks 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 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.
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 (HMRC), 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.
AFAs can be filed with HMRC free of charge for holders of UK IP rights. Special rules apply for the protection of geographical indications in Northern Ireland.
Under Article 67 WA, during the transition period, the current rules on enforcement and jurisdiction (Brussels Recast regime) continued to apply, including to proceedings instituted before the end of the transition period.
This issue was not addressed by the UK-EU TCA 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 applied to accede to the Lugano Convention, which would essentially replicate the Brussels Recast regime. However, that request was rejected by the EU Commission.
Under the WA, there could be no requirement for a UK address for service for three years after the end of the transition period in relation to comparable trade marks and re-registered designs created by the UK IPO on the basis of pre-existing EU rights.
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.
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 related to comparable trade marks and re-registered designs created under the WA.
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 requires an EEA address for service and does not permit UK representatives to act in new proceedings from 1 January 2021 (though a representative is not required for the mere filing of an EU trade mark or design). This is subject to the caveat for ongoing proceedings before the EU IPO.
The UK-EU TCA 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.
UK lawyers lost rights of representation before the EU IPO and other EU courts and bodies from 1 January 2021, except for ongoing proceedings.
The UK-EU TCA 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.