Nearing No Deal: Protecting Your IP Portfolio

Trade marks

Comparable TMs (EU)

Holders of a registered European Union Trademark (EUTM), on 31 October 2019, will automatically be assigned a comparable new UK trade mark. It will have the same filing, priority and seniority dates as their original EUTM. These new UK registrations will be called Comparable TMs (EU) and proprietors will not need to take any action or pay any fee to obtain these rights. Existing EUTMs will therefore only cover the remaining 27 Member States at the time of Brexit. Clearly, EUTM applications which have been refused, withdrawn or cancelled prior to 31 October 2019 will not qualify as Comparable TMs (EU).

Pending EUTM applications

For EUTM applications that are pending on 31 October 2019 and require UK protection, they will need to be refiled in the UK. Owners of pending applications will have nine months, i.e. until 31 July 2020, in which to refile an equivalent UK right at the point of Brexit, to retain the priority date of the original EUTM application. Any refiled UK application can be objected to or opposed in the normal manner and the normal UKIPO filing fees will apply to these applications. In addition, to benefit from the nine month window granted to refile the UK application, both applications must relate to the same mark and the specification used in both applications must be identical.

New applications and trade mark disputes

In the event of a no-deal, after 31 October 2019, separate applications will be required at UK and EU level if protection is required in the UK and in the remaining 27 Member States of the EU. This rule is applicable from now onwards, as any new EUTM applications filed from now will not register prior to 31 October 2019, even if the applications are filed on a “fast track.”

In the context of trade mark disputes, the EU Commission has stated that UK prior rights will be disregarded in decisions issued after 31 October 2019. Therefore, those seeking to oppose or invalidate an EUTM solely or mainly on the basis of UK prior rights should seek to achieve a settlement prior to 31 October 2019.

Designs

After 31 October 2019, in the event of a no-deal scenario, Registered Community Designs (RCDs) will continue to be protected in the UK as comparable rights in largely the same manner as described previously for EUTMs. For example, the same nine month window will apply for refiling the UK design right application. Conversely, Community Unregistered Design Rights (UDRs) will continue to be protected in the UK until the corresponding EU right expires. For new designs made available after 31 October 2019, a new UK “supplementary unregistered design right” is being created which is equivalent to the UDR. Therefore, for UDRs, the existing position will continue; namely that the rights exist by qualification under the statutory terms and that no specific registration is required.

.eu domains

The EU Commission has announced that UK based owners of .eu domain names may have their domain name registrations revoked on Brexit. Therefore, those who have an establishment in the UK only, and not in the remaining 27 Member States, will no longer qualify to hold these domains. Alternative domains will need to be considered.

Patents

The effect of a no-deal on substantive patent law will be less significant as most patent protection in the UK is held in accordance with domestic law, rather than the EU legal order. Existing patent rights and licences in force on 31 October 2019 will largely continue. EU supplementary certificates will be re-enacted and provided for under UK law. Also, the unified patent court and unitary patent, which was established by 25 EU countries for the purpose of streamlining the enforcement of patents, may still be used by UK businesses to protect their inventions within the EU contracting countries, assuming that system eventually enters into force.

Copyright

Although the UK and EU are parties to the main international treaties on copyright and related rights, in the event of a no-deal Brexit it is likely that the UK will lose the benefit of a number of EU laws concerning copyright and related rights including:

• Sui generis database rights are available only to nationals, residents and businesses of Member States and therefore UK nationals, residents and businesses will lose sui generis database rights
• UK based satellite broadcasters may need to clear copyright in each Member State to which they broadcast as they will no longer be able to rely on the country of origin copyright clearance rule when broadcasting into the EEA.

Planning ahead

As 31 October 2019 draws closer, rights holders should be reviewing their IP portfolios and must be prepared for the likelihood that a no-deal Brexit may very soon be a reality. A parallel filing system of EU and UK marks should be adopted for new marks going forward. In particular, trade mark strategies should be reviewed and separate UK trademark and/or design right applications may need to be filed imminently, or at the very latest, prior to 31 July 2020 for existing applications. Clients should also be reviewing their existing agreements to ensure that they will continue to apply to UK trade marks post 31 October 2019. To this end, all references to EUTMs and RCDs should be reviewed and, if possible, amended to also refer to UK rights.

For expert legal advice on issues relating to your IP portfolio, contact a member of our Intellectual Property team.