The UK leaves on 31 January 2020, at midnight (UTC + 1), but will immediately enter a transitional period until 31 December 2020.
The withdrawal agreement reflects how Brexit is currently unfolding, but does not provide absolute certainty for the future. Brexit remains an incredibly complex process, the ins and outs of which have not yet been finalized.
On 29 January 2020, the European Parliament overwhelmingly approved Boris Johnson’s Brexit departure deal with 621 votes in favor and only 49 votes against. After the notorious referendum of June 2016, the resignation of two successive prime ministers and many, many negotiations, the UK will leave the European Union after all. But what does this mean for right holders and their IP?
The UK leaves the EU today, 31 January 2020, at midnight (UTC + 1), but will immediately enter a transitional period until 31 December 2020. During this time, the UK will remain in the EU customs union and single market. With regard to IP rights, everything is set to remain the same during this transitional period, meaning that EUTMs, RCDs, UCDs, etc. will remain valid and enforceable in both the EU and UK until 31 December 2020.
After the transitional period, there will be some changes which we summarize below:
- European Trade Mark (EUTM) holders will be presented with a free equivalent UK Trade Mark and their existing licenses will continue to designate both the EU and UK if they did so before. With regard to pending EUTM applications which are ongoing at the end of the transitional period, an additional period of 9 months will be granted to apply for the same protection in the UK. Additionally, businesses, individuals and organizations that have never used or licensed – their trade mark in the UK, will also be able to opt out of the new UK Trade Mark.
- Registered Community Design (RCD) holders will also be presented with a free equivalent UK RCD, the creation of which will be governed by roughly the same rules as those applying to the creation of the new UK trade mark (see point 1).
- The British government is creating a Supplementary unregistered design (SUD) which will be similar to the European Unregistered Community Design (UCD) by providing post-exit UK protection for both 3-and 2-dimensional designs.
- EU Plant Variety Rights which are granted two months or more before the transitional period ends, are protected under UK law and will also become UK rights. If the EU rights are granted less than two months before 1 January 2021, an application will have to be made to the Animal and Plant Health Agency (APHA) to protect the variety in the UK.
- The UK will set up its own Geographical Indications (GI) system which will mirror the existing EU system. Existing UK products which are registered under the EU system, will receive UK GI status and remain protected in the UK. It is unclear at this moment whether the same will apply to non-UK products registered under the EU system.
- UK patents governed by national law will remain unchanged after Brexit. Since the EPO is not an EU agency, the UK leaving the EU also does not affect the current European patent system. Existing European patents covering the UK will remain unaffected.
- Businesses can continue to apply for and be granted Supplementary Protection Certificate (SPC) applications during and after the transitional period using the current SPC legal framework in the UK and existing UK SPC’s granted under that framework will continue to be valid. SPC applications which are pending at the end of the transitional period will also be examined under the current SPC legal framework in the UK and will enjoy the same protection as existing SPC’s.
- Copyrighted works will continue to be protected in the UK and vice versa. This applies to works made before and after Brexit. With regard to database rights, those rightsthat exist in the UK prior to the Brexit (whether held by EEA or UK persons or businesses) will continue to exist in the UK for the remainder of their duration. After the transitional period, UK citizens, residents, and businesses will no longer be eligible to receive or hold sui generis database rights within the EEA, while UK legislation will be amended so that only UK citizens, residents, and businesses will be eligible for new database rights in the UK after Brexit.
- As for the principle of exhaustion, IP rights that were exhausted both in the EU and in the UK before 31 December 2020 shall remain exhausted in these territories. After the transitional period, it seems the UK will recognize the EEA regional exhaustion regime for a temporary period.
The arrangement reflects how Brexit is currently unfolding, but does not provide absolute certainty for the future. Brexit remains an incredibly complex process, the ins and outs of which have not yet been finalized. Clearly, and reassuringly, both the EU and the UK are genuinely concerned with the continued protection of intellectual creations within their borders. During the transitional period this year, businesses and individuals are well advised to check their existing IP strategies and ‘Brexit-proof’ them where necessary.
One can only hope that any matters still in need of clarification are resolved quickly. For instance, many questions remain as to what extent the UK can still join the unified patent system post-Brexit and what the impact will be if the UK does not participate. So make yourself a cup of tea, grab a biscuit, and stay tuned for the next episode.
Although not mandatory, it is very much recommended to register the license with the UK IPO as soon as the new UK Trade Mark comes into existence in order to obtain full EUTM licensee protection in the UK.