Brexit Uncertainty Leading to IP Challenges

July 19, 2019
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The UK is Preparing for the Possibility of a No-Deal Brexit and has Issued Guidance Regarding How Intellectual Property Rights may be Impacted

It is unclear when the United Kingdom will leave the European Union, as European leaders recently extended the Brexit deadline to October 31, 2019. The UK also retained the option to leave sooner.

Brexit Uncertainty Leading to Intellectual Property Challenges

To date, the country’s Parliament has refused to ratify the terms of withdrawal, which could result in a “no-deal Brexit.” The lack of a withdrawal agreement calls into question whether there will still be a transition period in which the status quo is maintained with respect to intellectual property rights.

Not surprisingly, businesses that operate in the UK are wondering what to do next. The good news is that the UK is preparing for the possibility of a no-deal Brexit and has issued guidance regarding how intellectual property rights may be impacted. This post offers a brief summary.

Protecting Trademarks in the UK

Under Title IV of the Withdrawal Agreement, all existing registered EU trademarks and registered Community designs will continue to cover the UK during any transition period. After the transition period expires or in the event of a no-deal Brexit, such rights will continue to be protected and to be enforceable in the UK, as the country intends to provide an equivalent trademark or design registered in the UK. As detailed in guidance by the UK government, the new UK equivalent right will come into force at the point of the UK’s exit from the EU and will be provided with “minimal administrative burden,” i.e. no filing requirement.

Additionally, the trademark or design will subsequently be treated as if it had been applied for and registered under UK law. Accordingly, it will be subject to renewal in the UK, can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal, and can be assigned and licensed independently from the EU right.

After the UK leaves the EU, entities with pending  EU trademark and Community design applications must refile with the UK’s Intellectual Property Office and pay the associated filing fees. For a period of nine months from the exit, the UK government will recognize filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU applications. To ensure continued protection, these same provisions will apply to international trademark registrations designating the EU filed with the World Intellectual Property Organization through the Madrid and Hague Systems.

Protecting Patents in the UK

Patent owners won’t see as many changes if there is no Brexit deal because very few areas of UK patent law are based on EU legislation. Supplementary protection certificates for patented pharmaceutical products and agrochemicals are one notable exception. The good news is that all EU legislation governing supplementary protection certificates will remain in force. Going forward, this law, along with the existing supporting provisions in UK patent legislation, will form the UK’s own supplementary protection certificate regime, according to guidance from the UK government.

Protecting Copyrights in the UK

The majority of the UK’s copyright treaties exist independent of the EU and will remain unchanged. However, the EU has developed copyright laws and related rights that extend beyond the provisions of the international treaties, including several cross-border copyright mechanisms. On exit, the UK will be treated by the EU and European Economic Area (EEA) as a non- party to these treaties, and the reciprocal element of these mechanisms will cease to apply to the UK. These changes will primarily impact UK businesses and not those based in the United States.

Domain Names Post Brexit

EURid, which manages .eu domain names, has also published guidance regarding what will happen in a no-deal Brexit scenario. In essence, entities based in the UK will cease to be eligible to register or renew .eu domain names because they will no longer reside in or be established in the EU.

Existing UK registrants of .eu domain names will have two months to update their contact details to either establish an EU address or to transfer their domain names to an EU resident. Thereafter, all registrants that do not reestablish their eligibility will be deemed ineligible, and their domain names will be withdrawn. A withdrawn domain name no longer functions and can no longer support any active services (such as websites or email). However, the record will remain in the .eu registry database and may be reactivated if the eligibility criteria are satisfied.

EURid previously posted timelines that were based on the UK leaving the EU on March 30, which did not occur. Given that the deadline has been extended, EURid published the following notice:

Due to ongoing uncertainties over the United Kingdom’s withdrawal from the European Union, EURid has placed on hold any plan regarding domain names registered to individuals and undertakings located in the United Kingdom and Gibraltar.

Accordingly, this is yet another area that will require monitoring as the October 31 deadline approaches.

Next Steps to Protect Your IP Rights

If your business currently or expects to do business in the UK, it is important to understand the implications of the country leaving the European Union and the possibility of a no-deal Brexit. While many questions remain unanswered, there are steps you can take to protect your rights. Many companies are already filing separate U.K. and E.U. trademark applications for insurance purpose. To decide the best course of action, we recommend consulting with an intellectual property attorney who has experience managing intellectual property portfolios on the international level.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.