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Six months on: how has Brexit impacted IP?

Published: 30th July 2021
Area: Intellectual Property

It’s been six months since the UK left the EU, triggering a number of changes in the business landscape, including around intellectual property (IP) such as designs and trademarks. So, what is the new reality for IP in the UK?

What has changed?

Since 1 January 2021, EU trademarks and Community registered designs no longer cover the UK. The UK therefore created “comparable” UK trade marks and registered designs for all registered EU equivalent registrations at no cost to ensure that rights owners’ UK interests remain protected.

Whilst the parallel importation of IP-protected goods, lawfully placed on the EEA market, from the EEA to the UK will continue to be permitted, 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.

The UK also now has its own geographical indications scheme to protect food, drink and agricultural products with a geographical connection or that are made using traditional methods.

Do I need to do anything?

If you had made an application for an EU trade mark or an international application designating the EU, or an application for a Community registered design, and your application was still pending at the end of the transition period, you will not have received a comparable mark as of right.  Applicants who were eligible to apply for a UK mark on the basis of a pending EU application now only have up to and including 30 September 2021 to do so, so act fast!

You should also ensure that your representative contact details at the UK and EU Intellectual Property Offices are up-to-date.

To the extent that you had not used your EU trade mark in the UK prior to Brexit, you will have until 31 December 2025 to do so before your UK comparable right could be revoked for non-use.

If your business exports goods, check whether rights clearances will be necessary. Alternatively, make sure your customers have ensured clearance before the goods are imported into the EEA.

If you rely on unregistered design protection you will now need to think carefully about how and where you first market products to the design in order to gain the most appropriate territorial protection.

How has cross-border IP been affected?

Brexit has brought significant change to the way businesses will protect their IP rights across the UK and EU.

As of 1 January 2021, IP rights holders with multi-jurisdictional infringement problems involving the UK and at least one other EU Member State may now have to litigate twice, in both the UK and the EU.

New proceedings in the UK won’t stop ongoing infringement in the EU or result in the recovery of damages for infringements in the EU, and vice versa.

With many cross-border agreements already in place we expect to see more instances of the jurisdiction of a particular territory’s courts being questioned, and multiple territories accepting jurisdiction which can add complexity and cost to a dispute and make early settlement of a matter across multiple jurisdictions more attractive.

To the extent that the UK and EU markets are valuable to businesses, IP portfolios should cover both of these territories which will result in increased administration and cost.

Service of UK claims on defendants based in the EU has also changed, as for now claimants will need the court’s permission to serve on EU defendants and will have to do so through a considerably slower mechanism.  Rights owners should take this into account when seeking to issue proceedings against EU-based infringers.

What about current proceedings?

Any ongoing and new proceedings relating to infringement, validity or revocation of registered trade marks and designs in the UK will be limited to the UK comparable rights alone.

To the extent that parties to existing litigation in the UK wish to address any of these matters in relation to the equivalent EU trade marks or Community designs, they will need to consider commencing parallel proceedings in the appropriate EU forum, whether that may be the EUIPO and/or the courts of an EU member state.

Something to think about when engaging in settlement discussions is that if a claimant in ongoing UK proceedings or even a prospective claimant is able to persuade the defendant to agree to an undertaking not to infringe not just in the UK but also in the EU, without issuing parallel proceedings in the EU, it is arguably doing considerably better than it would if it were to win an infringement claim in the UK.

The same applies regarding damages in respect of sales of infringing product in the EU.

Future relations

With the UK able to create its own system, there is likely to be some divergence from EU processes in the future. However, so far many of the rules from the EU have been translated directly to the UK’s own system.

The one area where there could be a clear difference is in copyright law. With some unpopular decisions by the EU Court in this area, and the UK confirming that it will not adopt the EU copyright directive, there is an open door for change. Another sector where the UK may diverge is on parallel imports and exhaustive rights, although there’s currently a consultation to determine next steps.

As a result of Brexit, there are a number of IP processes that have changed, meaning more care and due diligence may be needed when handling IP in the future. IP law is global by nature and to a large extent harmonized across many countries.  However, businesses should also look out for any developments that may arise following further consultation, now that the UK can determine its own path forward.

Get in touch to find out how our intellectual property team can help.   

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