With Mauro Paiano – Partner, and Daniel Goodall - Associate
Thursday 19 November 2020
The UK Government has confirmed that the transition period will not extend past the end of 2020. The changes will affect nearly every business as well as the future IP legal landscape across the UK and EU.
At the end of the transition period, new rules will come into force in connection with the parallel importation of IP protected goods into the UK and the parallel export of IP protected goods to the EEA.
This webinar covers:
- The new parallel imports regime
- The regime’s impact on businesses
- What will happen to ongoing IP proceedings as well as future IP applications
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Webinar transcript
(Please note this is auto-generated and un-edited)
0:09
Hello, I'm Mauro Paiano, a partner in the IP team, and welcome to the second in our series of webinars, looking at the changes to the protection of intellectual property in the UK, following the end of the transition period.
0:22
Having discussed the status of EU and UK IP rights in our last webinar, we're going to look at some of the difficulties associated with the end of the transition period for rights holders, the effect on existing licenses and assignments, along with some practical suggestions to help limit any adverse impact on businesses.
0:41
We'll also discuss the status of Ongoing IP proceedings, the IP landscape across the UK, and the EU, parallel imports, and customer enforcement, and their impact on businesses.
0:53
So, first of all, to look at some of the practical considerations, I'd like to hand over to my colleague, Dan Goodin.
1:00
OK, so from the first of January 2021, UK attorneys will no longer be able to represent Rights owners in respect of new applications when you proceedings at the Intellectual Property Office or EU IPO.
1:14
So for those who haven't already done so, rights owners should appoint an attorney based in the EEA to represent them on new trademark and community register design applications, and proceedings before the EU IPO.
1:29
For EU IPO proceedings still ongoing at the end of the transition period.
1:33
The withdrawal agreement provides that UK representatives may continue to act on behalf of their clients at all stages of those proceedings.
1:41
For the UK comparable rights discussed in our earlier webinar, the address for service roles won't change for at least three years from, for the 31st of December 2020, So no immediate changes are required to your EU representatives.
1:58
The IPO has the UK.
1:59
A PO is issued a consultation on limiting addresses for service for other UK IP registrations to the UK and Channel Islands from the first of January 2021, so effectively reciprocating the same arrangements for UK rights and we are currently awaiting the outcome of that inquiry.
2:22
So, in terms of pending applications, where you have a pending application for an EU, right, on 31st December, 2020, and you want to benefit from equivalent protection in the UK, make sure that you apply for the UK Comparable right within the nine month grace period.
2:39
And, if you haven't yet applied to register IP, and do you intend to do so before the end of this year, Consider making an application for both the UK and EU, right?
2:49
To get the examination process in the UK, underway early on, Have a faster route to registration, and, therefore enforcement of your rights.
3:01
So inevitably with both an EU right and a UK comparable right, Clients will be faced with additional application and maintenance costs going forward. So we'll need to reflect this in our IP budgets.
3:13
Rights owners also now face the prospect of parallel proceedings, running in both the UK and EU courts and intellectual property offices and malraux we'll discuss this in more detail shortly.
3:27
So let's trademarks where the reputation and trademarks are not only infringed when an identical or similar markers use for identical or similar goods and services. They may also be infringed where a third party takes unfair advantage it off or damages the reputation attached to that trademark.
3:46
So a comparable UK trademark rights will benefit from any reputation acquired by the corresponding EU trademark in the EU, but only until the 31st of December 2020.
3:58
After this date, the comparable UK Monk's continuing reputation will be based only on use in the UK.
4:06
Now, this could potentially be limiting for owners to be trademarks with a strong reputation in the EU, but not in the UK, who later wished to enforce that equivalent, a comparable monks.
4:21
So, onto existing licenses, The UK has put in place provisions meaning the existing licenses of community registered designs and EU registered trademarks.Â
4:31
Or equivalent international rates designating the EU, would also apply to the equivalent UK Reregistered designs or comparable trademarks.
4:40
With licenses of UK registered trademarks, there are certain advantages to having those licenses register at the UK IPO.
4:48
For example, the license will become effective against innocent third parties acquiring conflicting interest in the mark, and licensees will not be prohibited from claiming certain costs and infringement proceedings relating to the Mark.
5:03
Since there is no equivalent provision or cost recovery for EU trademarks, licensees should consider recording their licenses of the UK comparable rights with the UK IPO within 12 months of the first of January 2021.
5:17
However, this is not obligatory.
5:21
Rights owners should also check their license agreements to ensure that the creation of the UK comparable rights, their name, in itself, will not put them in breach of contract, if applicable. And consider whether an opt out of the UK comparable right, may be appropriate.
5:42
In terms of assignments, it is possible to assign IP that hasn't yet been created, So clients should consider reviewing the territory provided for license agreements and any future assignments of rights.
5:55
Any references to the E A and E, you will need to be considered.
6:01
Also where owners of EU RET rights haven't yet informed the EU IPO of the assignment before the end of the transition period, The UK comparable rate will be registered in the name of the previous owner.
6:14
So, to avoid having to record the assignment at the UK RPO as well, rights owners should notify the EU IPO of any assignment.
6:21
Now, moving on now, two dot EU domain names.
6:26
For those who haven't seen our previous webinar on Brexit and IP rights, it's important to note the provisions on dot EU domain names.
6:34
If you hold a dot in your domain name, and, uh, a UK organization with no establishment in the EU, a UK citizen not resident in any EU member state, or a UK resident who is not an EU citizen, your dot edu domain name will be withdrawn as of the first of January 2021, and you should already have received notification of this.
7:00
So, ensure that you make provisions for the continuity of your websites, whether through alternative domain names or otherwise.
7:09
So in terms of IP proceedings in the UK and EU, one huge advantage of having a single trademark or a registered design covering the whole of the EU is that an injunction preventing the sale off and other acts relating to infringing products will cover every EU member states.
7:29
Fortunately for rights owners, any pan EU injunction is granted before the transition period ends, will continue to apply in the UK.
7:39
Effectively, any future enforcement in the UK will be in respect of the UK comparable right, mask that remains valid and registered.
7:48
Now provided that they are granted prior to the end of the transition period.
7:53
Pan EU injunctions from the UK courts will continue to be enforceable in the remaining EU member states.
8:02
Now during the transition period, the UK IP Courts have still been able to act as EU trademark and community design courts, with jurisdiction over infringement, validity, replication of iie trademarks and community design.
8:18
However, from the first of January 2021, this will no longer be the case.
8:23
Any ongoing new proceedings relating to infringement, validity, or revocation in the UK, will be limited to the UK comparable rates alone.
8:33
To the extent that, parties to existing litigation in the UK, wish to address any of these matters in relation to the equivalent in trademarks or community registered designs, they'll need to consider commencing parallel proceedings in the appropriate EU forum, whether that may be the EU IPO and or the courts of an EU member state.
8:55
Also, make sure that you keep in mind any local limitation periods to avoid your cause of action becoming time barred.
9:05
Now, in terms of ongoing proceedings of the EU IPO, that's from the end of the transition period.
9:10
Any pending or new oppositions or invalidity invalidity requests based solely on one or more UK rights will be dismissed.
9:19
Applicant seeking to challenge you registered rights on relative grounds are therefore need to rely on preexisting rights in the remaining member states.
9:29
Equally, challenges to UK registered rights on relative grounds will no longer be possible based on EU rights. In practice these challenges may proceed based on UK comparable rates.
9:42
Do note, however, that if an EU trademark or registered community design is revokes or invalidated before the end of the transition period.
9:50
The UK courts will recognize this as a revocation or invalidation of the equivalent UK comparable, right, Unless the ground for embedded or revocation did not apply in the UK.
10:05
So, for example, an EU registered trademark, revoked for having become generic by excuse in mainland EU, but not in the UK, would not be sufficient for the replication of the UK comparable trademark.
10:22
So moving forward from the first of January 2020, the UK IP courts will not have jurisdiction to hear any new cases based on EU rights.
10:33
Any remedies granted by an EU court regarding EU rights, will not extend to the UK.
10:39
So, Malraux is now going to talk in a little more detail about the future of legal landscape for IP across the UK and the EU.
10:48
Whilst we're getting nearer to the end of the transition period, the UK and the EU continue to negotiate to try and reach an agreement which will set out the feature relationship and hopefully included free trade agreement.
10:59
The UK at AU's understanding of the future relationship was set out in the Political Declaration, which was a great alongside the withdrawal agreement on 17th October, 2019.
11:09
And, in the context of intellectual property, the main objective for both the UK, the EU, there's to provide for the protection and enforcement of IP rights to stimulate innovation, creativity, and economic activity.
11:23
The political declaration itself didn't provide much detail. I pay, it only focused on the protection of database rights and geographical indications.
11:31
It allowed the UK and the EU to established around regimes for the exhaustion of IP rights.
11:36
And it said that a mechanism should be established, co-operate and exchange information on IP issues of mutual interest.
11:44
Bedsides published proposed legal test, texts in relation to the proposed future relationship concerning IP, and during their negotiations, they focused on the enforcement of IP rights in the digital environment and at the border and on maintaining the current high levels of IP protection.
12:01
Whilst negotiations in respect of non IP related areas may still be ongoing.
12:06
In the main, with one exception, at least the UK India, you have managed to agree how future IP should be dealt with.
12:13
The one exception referred to concerns new geographical indications.
12:17
So whilst it remains the case that anyone holding an existing geographical indication will be able to continue using it in the UK.
12:25
The UK has insisted on establishing its own scheme for processing new applications going forward with the exception Northern Ireland which will continue to use the EU's geographical indication scheme.
12:38
Of course, whilst much of what needs to be a great has been agreed, the changes to a number of IP rights, which will follow the end of the transition period, means that pan-European remedies will no longer be available in the UK.
12:50
IP rights holders who have multi jurisdictional infringement problems and vote in the UK and at least one other EU member state will now have to litigate twice, once in the EU and again, in the UK.
13:04
As well as increasing costs, this may have an impact on the predictability, can perhaps the perceived standard of litigation.
13:10
Since there must be an increasing risk that cases brought in the UK and the EU result in conflicting judgements, especially where there are parallel cases of illiteracy and infringement, running simultaneously, or whether UK's protection of IP starts to diverge from the US.
13:27
Turning now to the power of the import regime and the exhaustion of rights.
13:32
Under the withdrawal agreement, IP rights exhausted either in the EU or in the UK before the end of the transition period will remain exhausted in both territories.
13:42
This means that during the transition period, the importation of IP protected goods into an EU member state from the UK will not have infringed IP rights, provided those goods had already been placed on the market in the UK before the end of the transition period.
13:58
Similarly, the importation of IP protected goods into the UK from an EU member state has also been permitted, provided the goods had already been placed on the market in an EU member state.
14:12
As regards the position concerning the E a F States during the transition period, the government's already agreed with Norway, Iceland and Liechtenstein, than any IP rights which were exhausted, both in the A, F, the State, and the UK before the end of the transition period.
14:28
Would also remain exhausted in the EFTA States as well as the UK.
14:36
First of January 2021, the position concerning exhaustion, will change.
14:41
After the end of the transition period, IP rights in goods placed on the UK market by, with the consent of a rights holder after the transition period may no longer be considered exhausted in the day.
14:55
As a consequence, the parallel importation of IP protected goods into the A from the UK may no longer be lawful.
15:03
Conversely, the parallel importation of IP protected goods into the UK from an AA country will effectively remain the same.
15:13
The IP rights in goods placed on a market by with the consent of the rights holder after the transition period will continue to be exhausted in the UK which will make IPR protected goods freely and portable from the a to the K.
15:30
As a consequence of these changes, unless the UK and the subsequent they agree reciprocal arrangements, it may not be possible for businesses to freely export IP protected goods from the UK to the EEA. without the consent of the IP rights holder.
15:46
Any UK businesses, which export goods, in which may be affected by this change, should check whether the rights clearances will meet, will be necessary oral, tentatively ensure that their customers have security clearance before the goods are imported into the day.
16:01
Those businesses, which on A you IP rights in goods, where, historically, they've been unable to do very much about that goods being parallel export it to the AEA.
16:12
This change will mean that they may not be in a position to place any inputs into the AEA where consent hasn't been provided.
16:21
What we don't know is whether this exhaustion regime will remain the same going forwards.
16:26
Ultimately, it will be for the UK government to decide how liberal and exhaustion regime it wishes to adopt in future years.
16:34
Whilst the government may choose to maintain the status quo, It's also possible that in the future, it may consider it more advantageous to adopt a system of International exhaustion, under which goods from anywhere in the world may be imported into the UK if they've already been lawfully placed on the market elsewhere in the world.
16:51
The adoption of this approach is likely to be popular amongst consumers given the likely impact on prices paid for goods in the UK.
16:58
There's little doubt that that would be strongly resisted by brand diner's so we'll have to see which way the government, guys.
17:06
Finally, I want to look at the changes to customer enforcement.
17:10
Up to now it has been possible to file a single application for action in any EU member state which would require UK customs to search for and detain infringing goods entering the UK.
17:22
This arrangement's been extremely beneficial to brand and is fighting to stop the trade in counterfeit and copycat products throughout the year.
17:30
Going forward, IP owners will need to have separate arrangements in place for the UK and the EU.
17:36
Then the existing arrangements put in place in an EU member state will no longer cover the UK.
17:42
Any arrangements which had previously been put in place through UK customs authorities, which will typically be the case for you, kept akins, will also become invalid after 31st December 2020, both in the UK and in the remaining EU member states.
17:58
Instead, it will be necessary to refile AAU arrangements through an alternative Customs office in an EU member state.
18:05
As a consequence of those changes, subject to one exception, any IP owners that have put EU arrangements in place through the UK customs, should take immediate steps to secure separate UK and EU arrangements, if they can to avoid a gap in cover after 31st December, 2020.
18:23
As for the one exception I mentioned, again, this relates to Northern Ireland, where the existing customs regulation will continue to apply in certain respects, up to the end of the transition period.
18:34
So what are some of the takeaway points from today's webinar? Well, ensure that you're properly represented before the EU intellectual property of this.
18:44
Now the parallel proceedings in the UK and the EU may become necessary for the proper protection and enforcement of your rights.
18:51
Check whether changes to parallel imports will affect you, and arrange for separate Customs arrangements in the UK, and the EU wants the transition period has ended.
19:02
That concludes our series of webinars dealing with the impact of Brexit on IP.
19:07
We hope you found the series helpful.
19:08
And if there's anything you'd like further information on, or if you have a specific query on any matter that you'd like to discuss, please let us know, and we'd be happy to help.
19:17
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