With Mauro Paiano – Partner, and Daniel Goodall - Associate
Thursday 5 November 2020
Brexit will bring about a series of changes and challenges for the protection of intellectual property (IP). When the transition period ends on 31 December this year, the laws will change and businesses will need to revisit their IP rights. There is also great uncertainty as to what extent the UK may – or may not - diverge with EU law moving forward.
Companies and owners of intellectual property rights should act now to ensure they protect their IP assets prior to the transition period ending 31 December.
This webinar cover:
Brexit impact on existing registered EU intellectual property
Creation of comparable UK rights
Immediate steps to take to protect your IP rights
Impact on unregistered rights such as copyright and unregistered designs
Brexit impact on existing registered EU intellectual property
Creation of comparable UK rights
Immediate steps to take to protect your IP rights
Impact on unregistered rights such as copyright and unregistered designs
(Please note this is auto-generated and un-edited)
Ah, hello. I'm Mauro Paiano, one of the partners and in the Intellectual property team here at Shakespeare Martineau and welcome to today's Webinar, which is the first of a series looking at how Brexit will affect various issues relating to IP.
To give a flavor of what we'll be discussing I've highlighted on the slide the areas which we'll be looking at today.
Now whilst the UK Lefty on the 31st January 2020 the UK has remained within the EU's legal framework during a transition period that expires at 11 0 AM on 31st December this year.
So over the past year or so, from an IP perspective, at least, it's effectively been business as usual, whilst the transition period counts down.
But as we quickly approached the end of the transition period, what will that mean for existing IP rights?
Well you needn't worry that come the first of January 2021 Everything has got to change.
The UK's intellectual property laws and the extent of protection which is provided to right turners, will largely be changed.
That's because many rights and national rights.
some European rights for example, European patents are not affected in any event and a lot of existing UKIP law has been harmonized.
It adopts many of the EU's IP laws already and will be retained after the end of the transition period.
Having said that there are changes which will affect owners of AAU trademarks and community design rights both registered and unregistered.
AAU trademarks have been available since April 19 96.
Rich, the community design since 2003 and community enriched the designs since 2002.
They've helped to harmonize IP frameworks across the EU to give businesses predictable and efficient protection for their innovation, and to a large extent, they've proved to be very popular.
In each case they offer a unitary rights giving protection within all current and future EU member states.
Of course, whilst a number of EU member states have joined, since the rights were first made available, no member state has left the system. So Brexit has required some fundamental changes.
And to discuss how the landscape concerning trademarks and designs will be changing.
I'll hand over to my colleague, Dan Goodall.
There's an associate in our IP team.
Thank you, Mark.
And so, from, from first of January 2000 to 21, And once the transition period has ended, registered EU trademarks and community design rights will continue to give protection in the remaining EU member States, but they will no longer provide protection in the UK.
Existing UK national trademarks and register designs will be unaffected.
However, holders of EU trademarks, community registered designs, and community plant variety rights, which have been registered or granted before first of January 2021, will become the holders of a comparable UK right, without re-examination or payment of a fee.
The UK IPA will place on the UK trademarks Register, new UK registrations for each EU trademark that was on the register the previous day.
The Brexit trademark regulation's call this new type of rights, a comparable trademark EU, adopting the language used in the withdrawal agreement.
So, these comparable rates will have the same renewal dates, and it'll take the same firing, or priority, dates, that's, the corresponding EU, writes from, which they will derive.
And, this means that a comparable mark will have the same status and effect as a trademark registered under the UK trademarks.
A comparable EU mark will be entirely independent and separate from the EU trademark from which it arrives.
There will be no need to apply for the comparable MOX.
The ... will not issue any registration certificates for comparable marks and in the case of comparable marks derived from E trademarks. Registration number will be the last eight digits of the EU market from which they were derived with the added prefix UK series. There are nine, so it will be easy to identify.
Now, there is an opt out option for owners of existing EU trademark registrations, and to opt out owners have to serve notice on the UK trademarks Registrar at any time, whether, during or after the transition period that they wish to opt out of owning the corresponding comparable mark.
The opt out will not be available if and the comparable UK rate has been used in the UK.
It's been assigned or licensed, or an agreement relating to it has been entered into, or if it's the subject of litigation.
If a request for an opt out is accepted, it'll be deemed to have taken effect from the date of the transition period.
And the registrar will have a duty to remove that comparable mark from the register.
So why might owners wish to opt out?
And, well, one example might be, if any trademark owner has only use the EU mark outside of the UK, and they're absolutely certain that they're not going to use it in the UK and future, or at least not in the first five years.
And they may wish to avoid the prospect of featured renewal costs, because no renewal costs will be increased with, with two separate rights. And they may not want to become engaged in any challenge to its validity in the UK, when the mark is of no importance to them.
Another important thing to check is whether the creation of the UK comparable right will actually put holders of EU marks in breach of license arrangements.
And if this is the case, then the owner might want to consider opting out.
And this is something that we'll cover in our next talk.
So on to renewing trademarks once a comparable UK trademark has been created, there will be separate renewal fees for each comparable UK mark and the existing trademark from which it was derived, cable to the UK IPO and the EU eichler, respectively.
So there will be some additional costs for trademark owners going forwards. In terms of renewable letters, the UK IPO will remind trademark UK trademark owners six months in advance of their trademark expiring.
But it's going to be possible for them to give six months advance warning and where a comparable mark is due to expire less than six months from the first of January 2021. So what the UK IPOs are going to do is right to hold as soon as reasonably practicable and give the owner six months from the date of the notice to renew their comparable mark.
So an important practical step would be to make sure that your representative contact details, the EU IPO are up to date before the end of this year.
Where the comparable right is not renewed, there'll be removed from the register, but may be restored at a later date in accordance with existing UK law.
Birney, you trademark renewal date falls after the first of January 2021.
An early renewal payment to the EU IPO will not be enough to avoid having to pay the renewal fee to the UK IPO as well. So watch out for them.
So where an EU trademark has expired in the six months, leading up to the first of January, 2021.
And they remain on the register.
I didn't but it's expired.
And they may still be rescued in the six months from expiry.
In which case, the comparable mark will also be treated as expired unless and until the owner of the EU trademark want to use it.
So if the EU trademark is resurrected by late renewal, the UK IPO would also resurrect or renew the registration of the corresponding comparable mark with no additional fee to be paid.
But conversely, if an international trademark is renewed late, the owner will have to notify the UK IPO within nine months of the end of the transition period.
Where no renewals are made in these circumstances, the comparable mark will be removed from the eukaryote register.
So, finally, on trademarks, pending applications where, where an EU trademark application or an international application designating, the EU is still pending and the taste at the end of the transition period. So it hasn't actually proceeded to registration.
Applicants will then have a grace period of nine months from the first of January to apply for equivalent rights in the UK and take advantage of the earlier form applications, finding date, or if there is one of the priorities that date.
So positive steps will be need, will be needed by trademark owners in these circumstances.
In the case of community registered designs, which existed prior to the first of January 2021, the UK IPO will also place on the UK. Designs, register new UK registrations for each registered community design. These are classified as reregistered UK designs.
The reregistered design will be a fully independent UK right, and will inherit the registration application and priority dates from the corresponding community design.
Like comparable marks, these equivalent rights will be created at no cost to the owner of the community design.
They can be identified by the number allocated to the re-register design, which will consist of the full Registered Community design number, with the prefix nine.
Again, like the comparable trademark, right, there will be a similar ability to opt out, in which case, the re registered design will be treated as if it had never been applied for or existed under UK law. This will not be possible where the rewritten to design has been assigned licensed, or is the subject of an agreement where the re re-register design is the subject of litigation.
So moving on to renewables. Once a re register designed has been created, it will retain the renewal date if the parent community registered design, and then we will be renewable every five years up to a maximum of 25 years.
Separate renewal fees will be payable for each comparable UK, re-emerges to design.
And the existing community designed from which it was derived.
These will be payable to the UK IPO and the EU IPL respectively.
The UK IPO will continue to send renewal reminders to any UK register design owners and advances the expiry date.
However, as with comparable trademark rights, where the re-register design expires, within six months, of the end of the transition period, the UK IPO's introduced a modified procedure, allowing for renewal within six months of notification by the UK IPA.
Again, as with the comparable mark, if the renewal date falls after the end of the transition period, renewal fee will be payable to the ... PO, even if the community design renewal fee had already been paid previously.
So, make sure that you pay both renewal fees or risk of losing your rights.
And we're at Richland Community Design has expired within six months of the first of January 2021 but remains on the Community Design Register.
Reregistered design will be created will expire status, if the corresponding community design is renewed late, The corresponding re-register design will also be treated as having been renewed without the need to pay a renewal fee for the UK IPO, and when rent no revenue is made, the reregistered design will be removed from the UK IPO Register.
Where a rich the community design is re-instated after the first of January 2021, the owner will be entitled to a re-register design provided the filing date predates the first of January 2021, where applications are pending at the end of the transition period. Applicants can take advantage of the application filing date by making an application to registry UK design within nine months of the end of the transition period.
To do so, the application must relate to the same design as the corresponding registered Community Design.
Where an applicant of a register Community design has opted to defer publication of the application for up to 30 months and the deferment is ongoing as that first of January.
The applicant will be able to preserve the only finding and priority date, provided that it applies for an equivalent registered design and a UK IPO within nine months of the end of the transition period.
In this scenario, there'll be no need for a substantive examination, since this would already have been carried out by the EU IPA.
Provisions have also been made put it in place to allow deferment of the corresponding application by up to a maximum of 12 months.
Full protected, registered international designs with an EU designation, existing at the end of the transition period.
The UK IPA will create a reregistered International design, which will be identical to the re registered Designs created from registered Community Designs.
The number allocated to the reregistered International Design will reflect the International Registration number prefixed with the Number eight.
Similarly, there are provisions which deal with pending applications and applicants need to apply within nine months of the end of the transition period.
It's also possible to claim earlier registration and any priority date, whether it's an earlier corresponding UK National Register design application.
Similar provisions apply in connection with the ability to opt out, renewals, late renewals, restoration, and deferred publication.
Moving on now to unregistered designs.
We will shortly see several new unregistered design rights and work within the UK.
Where community, unregistered designs are protected in the UK, as an unregistered community design, before the first of January 2021, they will continue to be protected for the remainder of the three year term.
That's UK, continuing unregistered community designs effected from first of January.
The fact that the corresponding unregistered community design was established before first of January, through first disclosure in the EU, but outside of the UK, will not affect the validity of the continuing unregistered design in the UK.
Following the end of the transition period, the UK will also be creating a new unregistered design, right, called a supplementary unregistered design.
This will ensure that the full range of unregistered design protection available in the UK before the end of the transition period will remain available.
Supplementary, unregistered design will effectively provide the same protection as the community on registered design of both 3 and 2 dimensional designs for a period of three years.
Although, of course, the scope of protection will be limited to the UK, its protection will not extend to the EU.
The supplementary, unregistered design will be established by first disclosure in the UK.
So first disclosure in the EU will not establish the UK equivalent design, and it may destroy the novelty in that design from a UK perspective.
Should you latency to claim UK unregistered rights, and similarly first disclosure in the UK may not establish community unregistered design right, could destroy the novelty, and that design should unite to seek to claim EU unregistered rights.
So it's not clear yet whether the marketing of a design simultaneously in the UK and EU, for example, by live streaming online, would give rise to both community unregistered design and UK, supplementary, unregistered design?
So it's now more important than ever, to carefully consider how when and where you first is going to designs in order to establish unregistered protection in the markets, most important to you.
To existing UK, unregistered design, right? We'll carry on as before, and will exist alongside the continuing and supplementary on registered design rights. So we'll have three to think about.
It will continue to provide protection for the shape and configuration of three-dimensional articles for up to 15, up to 15 years, from the date of the end of the year, in which the design was first recorded, or a corresponding article, was first made, which is cutshort to 10 years from first marketing, of the, product, made the design.
However, the qualifying criteria, UK design right will change, on the first of January.
Until the end of the transition period, UK design right could be established, and in the following circumstances.
So, by a designer who is resident in the EU, by a business employing designer formed on the laws of an EU member state, or where the first disclosure of the design code in an EU member state? This means the activity inside the EU to outside the UK could be sufficient for establishing UK design right.
But from the end of the transition period, the qualifications for the UK design right will be limited to individuals resident in the UK, or a qualifying country as defined by the act.
Businesses formed under the rules of the UK or qualifying country Where qualification for UK unregistered design, right Is as a result, first marketing, you'll need to have first marketed articles made to your design in the UK or a qualifying country, so no longer EU member States. So, I'll just pass you back over to Margaret is going to talk about copyright.
That was, the main change is focus on trademarks and designs. I want to quickly look at the position of other IP rights. First of all, I want to look at copyright.
Copyright Law has largely been harmonized across the EU, primarily by way of directives, rather than directly applicable AQ regulations.
In addition, the UK is a signatory to a variety of international copyright treaties.
So as a consequence, most copyright law will remain, at least for the time being unaffected by Brexit.
There are, however some minor changes which will occur after the end of the transition period, which have been set out in the relevant regulations.
As part of the UK's qualification requirements for copyright protection, the UK currently recognizes copywriting works made by a national, resident, or business of, or first published in or transmitted from, the UK, another a state, or another third country that participates in the international treaties on copyright.
Following the end of the transition period, all references to the EEA will be removed from the existing qualifying criteria.
However, since all AEA states currently participate in the treaties, the status quo will be maintained And so far, for the time being, at least, qualification for copyright protection, when change.
The position of orphan copyright works. That's where the rights holder is either unknown or can't be found, will change.
The Orphan Works directive will no longer extend to UK cultural heritage institutions, and those institutions will no longer be entitled to make works available online in the AEA under the orphan works exception.
In the UK, the exception to copyright infringement for orphan works, will cease institutions that wish to digitize and make orphan works available online in their collections, will no longer be able to do so in the UK under the exception to copyright.
This means that works that UK institutions have previously placed online will have to be removed to avoid infringing the copyright in those works.
Alternatively, in the institutions that wish to maintain their online collections within the UK, will now need to do so via the UK's own Orphan Works licensing scheme.
The government intends to repeal the portability regulation.
This is the regulation which allows consumers across the to access online content, for example, Netflix and Amazon Prime, as if they were at home when they travel in the AEA.
This means that UK consumers visiting the EU and EU consumers as consumers visiting the UK.
I like to see restrictions to the content ordinarily available to them when they're in their home state.
And finally, the government also intends to make it an offense to use a satellite broadcast Dakota device, intended for an EU audience to access a program included in a UK broadcast and thereby avoid paying access charges.
So what's the long-term outlook for UK copyright law?
We're looking forward beyond the transition period.
It's unclear whether the UK will retain Harmonize laws and if it does, whether the UK Courts will interpret them afresh or whether they'll follow the Court of Justice's rulings.
The government has already indicated that it has no plans to implement the directive on copyright in the digital single market into UK law.
That's the directive, which represents the EU's program of reforms.
Covering the press publication rights.
Online content sharing service providers and protections for authors and performance.
And additionally, we'll have to see whether the Court of Justice's ever widening approach to the protection of utilitarian industrial designs through copyright will find favor with the UK cordes whether this will be an area where the UK courts will readily divert away from the EU's approach to copyright protection.
There will be changes concerning the EU database, right.
This was created in the UK, following the implementation of the database directive in 19 96, and gives protection for databases.
Although a database doesn't have to be original for a 25 database, right, it does need to be a substantial investment in obtaining, verifying, or presenting the data.
The relevant regulations provide that following the end of the transition period.
Any EU database rights, existing at the end of the transition period, will be preserved for their entire normal duration.
UK citizens, residents, and businesses will be eligible for a new, UK specific database rights and qualifying databases, which they make after the end of the transition period, And that new right will give the same rights in the UK, as the EU database Rights, Gibson a.
Conversely, when new databases are created by residents, nationals, and businesses in the EEA after 31st December 2020, they'll continue to be protected by an AAU database, right. But that right, will no longer get protection in the UK.
So, as a consequence, a new database created after 31st of December 2020 will either attract UK database, right, or a new database, right, depending on where it was created.
As for patents, there's little harmonization of substantive patent law at EU level, and Brexit has a direct impact on the application processes, and the registration systems for UK Domestic Patents, which are administered by the UK IPA.
And European Patents Designating the UK, which are administered by the European Patent Office, which is not itself an AAU institution.
The UK's membership of the Patent co-operation Treaty and the European Patent Convention remains unaffected, and the UK and European patents continue to be enforceable in the UK in the same way.
With regard to supplementary protection certificates, which can extend the duration of patents for plant protection products or additional products, a yellow will continue to apply to applications that are pending in the UK, as not the end of the transition period.
Future supplementary protection certificates for the UK will be granted only by the UK IPO and will be based on either national or European patents at a UK marketing or thought authorization, there'll be no change to the length of protection, all the fees incurred in connection with those certificates.
And that's for the unitary patents.
The UK's participation in a system for the registration of a unitary patent covering multiple EU countries appears to be quite remote.
The UK Government ratified the UPC in April 2018 that in July 2020, the government withdrew its ratification, announced its withdrawal in Parliament.
Indeed, the very future of the system itself is open to doubt in any event, participation in the unitary patent and indeed, the court is only intended to be open to your AU members.
So Brexit means that the UK won't be able to participate after transition period ends unless there's a special agreement reached with the AAU and participating states to permit the UK to participate as a third country.
With regard to trade secrets and confidentiality, the government implemented the Trade Secrets Directive in 20 18, The trade secrets enforcement regulations, as the directive largely reflected the UK law position, the regulations are essentially procedural.
Nevertheless the UK's departure from the EU, what directly affect the law on trade secrets, or confidentiality.
Any UK entity is doing business in the EU, will still be able to rely on and enforce the directives terms in any EU member states, because the directive applies regardless of where the secret holder is domiciled provided that damage suffered took place in an EU member state.
There are also regulations which touch on geographical indications and community plant variety rights.
Anyone holding a geographical indication, including designations of origin, traditional speciality is guaranteed in traditional terms of wine.
At the end of the transition period we'll be entitled to continue to use it in the UK, without any need for re-examination, unless its protection is derived from an international agreement to which the EU is a party.
If, however, a geographical indication loses its protection in the EU, at anytime after the transition period ends, then that look that right will also be lost in the UK.
As for the community plant variety, right, this is only enforceable in the, so the UK will be establishing its own plant variety registration system to operate from the end of the transition period.
Finally, with regard to dot EU domain names, it's currently the case that undertakings and organizations established in the UK and UK residents and citizens have been able to hold and register dot edu domain names during the transition period.
Once the transition period ends, UK undertakings, and organizations established in the UK, but not in the EU UK citizens who are not residents of an EU member state, and UK residents who are not EU citizens, will all lose the right to own adult a domain name.
And, from the end of the transition period, applications for the AAU domain names will not be accepted, from any of those entities, normal dot edu domain names, Paler to be transferred to them.
That concludes our run through of how IP rights will be changing following the end of the transition period and the key takeaway points around the slide.
Comparable rights will maintain protection of existing EU Registered trademarks and community rich designs.
Positive action will be required to maintain protection of applications not registered by 11 0 PM on the 31st of December.
And you'll need to watch this space regarding the extent to which ... may diverged from EU law, on the first of January 2021 onwards.
Have you found it useful and relevant in the current circumstances?
And if there was something you'd like further information on, or have a specific query on any matter that you'd like to discuss, please let us know. We'll be happy to help.
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Thanks very much for watching, and we hope that you'll be able to join us for our next Brexit IP webinar.