Let’s talk Brexit: IP update

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:

1. 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.[1] 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.
2. 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).
3. 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.
4. 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.
5. 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.
6. 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.
7. 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.
8. 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.
9. 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.