THE MAIN POINTS TO NOTE NOW THAT THE UK HAS LEFT THE EU

Headlines

• Patents are unaffected by Brexit.

• Some other intellectual property rights will be affected because the law has been harmonised by EU legislation, but different rights will be affected in different ways.

• From now on, we recommend you take advice about the available intellectual property protection before you publically disclose any new design. For example, by advertising, offering to sell, or selling anything made to the design or incorporating the design. Read more about this in paragraphs 4 and 5 below.

If you would like to discuss how you might be affected by the changes in this note or have any questions or queries regarding any of this information. Please don’t hesitate to call us or contact John Sykes on [email protected]

Patents.

• There is a separate system for applying for patents in Europe under the European Patent Convention. This is not an EU creation and will not be affected by Brexit.

• For patents, there has been little harmonisation at EU level but this was about to change with the launch of an EU-wide patent known as the Unitary Patent. The Unitary Patent is open only to EU members, and the agreement for this to proceed has not yet been ratified, so Brexit will mean the UK cannot participate unless a special agreement is reached with the EU and participating states.

• The government intends that the UK continue with its own supplementary protection certificate (SPC) regime.

What you need to do – there are is no need to take any specific steps in relation to patents as a result of Brexit.

Trade marks and designs.

• EU registered trade marks and designs cover the whole EU (known as EU trade marks or EUTM andCommunityregistered designs or CRD). These will no longer have force in the UK after the transition period.

• Comparable UK rights (equivalent to the UK “portions” of EU registered trade marks and designs) will arise on 1^st January 2021 after the end of the transition period. The registration and grant of these new rights will be carried out free of charge by the UK authorities.

• Unregistered Community design rights arising before the end of the transition period will automatically continue on and after 1^st January 2021 for the remainder of the three year term.  More below.

• A new UK right called the supplementary design right or SUD has been created having the same level of protection as UCDs in the UK. More below.

Trade Mark Licences

• Where an EUTM has a licence or security interest, this will continue to still stand in the UK.

• Any licence or security interest that refers to an EUTM and authorises acts in the UK will be treated as if it applies to the comparable UK trade mark. You must make any licencees aware of this new right, and check that it does not breach any existing agreement.

• While the UKIPO does not require licence and security right transactions to be registered, those registered at the UKIPO within 6 months of the transaction are provided some further protections than unregistered transactions. Registration is almost always recommended.

Trade Marks – What you need to do – For existing EUTMs, you do not need to do anything, these will automatically be converted into comparable UK trade marks.

If your EUTM is pending after 31^st December 2020 and you wish to have protection in the UK, you will need to register for a comparable UK trade mark within 9 months of the 1^st January 2021.

For future trade marks where protection is sought in the EU and the UK, you will need to make separate applications to the UKIPO as well as the EUIPO.

You should make any licencees aware of this new right referred to in 4.2 above and check that it does not breach any existing agreement operative in the UK.

Designs – What you need to do – For existing EU registered designs, you do not need to do anything, these will automatically be converted into comparable UK registered designs.

If you have an EU registered design application still pending after 31^st December 2020 and you wish to have protection in the UK, you will need to file a comparable UK registered design application within 9 months of the 1^st January 2021.

For future registered design rights where protection is sought in the EU and the UK, you will need to make separate applications to the UKIPO as well as the EUIPO.

Further information

We have prepared more detailed guides for your information:

‘Changes to Trade Marks after 31^st December 2020’ which is available on our website here – Changes to Trade Marks after 31st December 2020 – Mohun Aldridge Sykes Limited – Intellectual Property Attorneys Mohun Aldridge Sykes Limited – Intellectual Property Attorneys (mohun-ip.co.uk)

‘Changes to Designs after 31^st December 2020’ which is available on our website here – How Brexit will affect EU designs after 31st December 2020 – Mohun Aldridge Sykes Limited – Intellectual Property Attorneys Mohun Aldridge Sykes Limited – Intellectual Property Attorneys (mohun-ip.co.uk)

EU unregistered designs to continue in the UK

• Designs that are protected in the UK as an unregistered community design (UCD) before 1^st January 2021 will be protected as a UK continuing unregistered design and will be automatically established on 1^st January 2021.

• It will continue to be protected in the UK for the remainder of the 3 year term attached to it.

• The fact that a corresponding unregistered community design was established before 1^st January 2021 through first disclosure in the EU but outside of the UK will not affect the validity of the continuing unregistered design.

New UK Supplementary unregistered design

• Under the new law, the UK has created a UK unregistered design right called supplementary unregistered design (SUD).

• This right will ensure that the full range of design protection provided in the UK before 1^st January 2021 will remain available for new designs after the UK leaves the EU.

• The terms of supplementary unregistered design protection will be similar to that already conferred by unregistered community design. However, the protection it provides will not extend to the EU.

• Supplementary unregistered design will mirror the UCD by providing post 1^st January 2021 UK protection for both 3-and 2-dimensional designs.

What you need to do: from now on, take advice about the available intellectual property protection before you publically disclose any new design. For example, showing it to anyone, by advertising, offering to sell, or selling anything made to the design or incorporating the design.

This is because SUD will be established by first disclosure in the UK or another qualifying country. This will be subject to interpretation by the UK Courts.

Therefore, you should carefully consider how, when and where you first disclose your designs in order to establish unregistered protection in the UK and the EU.

Here’s the reason to be careful. First disclosure in the EU will not establish SUD and may prevent it being created later by a later first disclosure in the UK.

But first disclosure in the UK would create the SUD but may not be effective to establish the EU unregistered design right. Registering the design in the UK and the EU would avoid these concerns as to whether the unregistered design rights come into effect.

Confidentiality.

• Brexit will not directly affect the UK law on confidentiality. The EU-UK Trade Agreement provides that the UK and the EU will ensure laws are in place to protect trade secrets which are defined in the trade agreement. We will have to wait and see whether the law in the UK about confidentiality when applied to trade secrets changes as a consequence of the trade deal.

What you need to do – The disclosure of trade secrets and important commercially sensitive information should be done only after a non-disclosure agreement (NDA) has been put in place. The NDA should be drafted to take account of the definition of a ‘trade secret’ in the EU-UK trade deal.

Copyright.

• There are no registered rights for copyright, but copyright law has been increasingly harmonised by a series of EU directives and regulations and the ECJ has shaped EU copyright law as a result of references by national courts. There are a number of areas of copyright law where English judges have expressed dissatisfaction with EU law, and one school of thought is that English and EU copyright law may start to diverge in certain areas post-Brexit.

• Indeed, the government has already announced that it does not intend to implement the Digital Copyright Directive.

What you need to do – there is no need to take any specific steps in relation to copyright at this time. You are may have to take some steps later but this will depend on how copyright law develops based on the terms of the EU-UK trade deal.

Free movement of goods

• IP rights are said to be ‘exhausted’ when a produce protected by IP rights is first put on the market in the EU by the owner or with the consent of the owner.

• The EU-UK trade deal states that the EU and the UK can develop their own rules about IP rights becoming ‘exhausted’.
• Customs enforcement of intellectual property rights.

1. There are will be separate procedures after 1^st January 2021 for the UK and the EU. The UK scheme for the enforcement of intellectual property rights at the UK border closely reflects the EU scheme which was applied in the up to 31^st December 2021.

If you would like to discuss how you might be affected by these changes or have any questions or queries regarding any of this information. Please don’t hesitate to call us or contact John Sykes on [email protected]

Mohun Aldridge Sykes – 30^th December 2020