Currently, intellectual property is one of the areas of law that is most extensively harmonised across the EU. Post Brexit, this may change over the long term in some areas as case law diverges and develops; Europe following the ECJ and the UK following the decisions of its higher Courts.
As it is likely that the UK will no longer be subject to the EU Trade Mark Regulation and EU trade marks (EUTMs) will no longer be directly applicable in the UK, it is advisable that trade mark proprietors ensure they have full protection across jurisdictions.
So if you own an EU trade mark, consider filing additional UK only trade mark applications now to ensure there is separate registered trade mark protection in the UK alongside your EU registrations.
It is anticipated that a conversion mechanism will be put into place to convert existing EUTMs into a separate EUTM registration and a UK trade mark registration.
For unregistered trade mark rights, once the UK exits the EU, earlier UK based unregistered trade mark rights will not be usable to challenge EUTM applications. Thus trade mark proprietors may wish to review their portfolios to put trade mark registrations in place of unregistered rights for this purpose and added protection.
Trade marks can be revoked if there is lack of genuine use once registered for more than 5 years.
It is therefore advisable to keep good records of when and in what countries your registered trademarks have been used.
Design rights are likely to be similarly affected in that registered and unregistered Community Designs will no longer be protected in the UK. Again, there is likely to be some form of conversion process for existing registrations and potential administrative costs should be set aside and domestic stand-alone UK registrations considered. The latter is an inexpensive step.
Database right (the right to prevent the unauthorised extraction or use of data from a qualifying database) originated from an EU Directive. Database rights should continue in a similar fashion to how they exist at present. However, businesses should be aware that if the UK does not become a member of the EEA post-Brexit it will need specific legislation for UK database rights to be recognised in the EU.
Copyright and The Digital Single Market
The EU has been looking to reform copyright law to make it fit for purpose in the modern age, in particular to better enable e-commerce across the EU. This has manifested itself in the Digital Single Market Strategy (DSM). The DSM aims to maximise the growth potential of the EU digital economy and provide better access for businesses and consumers to digital goods and services across Europe. With the UK’s digital sectors providing an essential contribution to the UK economy, the Government will need to make a case-by-case assessment of the extent to which, after the UK leaves the EU, how the policy objectives of each of the twelve Digital Single Market initiatives can be achieved.
Trade Secrets Directives
At present trade secrets are dealt with by way of common law in the UK. The pending Trade Secrets Directive which must be implemented in EU countries by 9 June 2018 seeks to set minimum standards of protection of trade secrets across Europe. Although the UK could revisit its position on trade secrets post-Brexit, the Directive would have likely been welcomed by UK businesses and in many ways codifies existing English law.
The UK may therefore look to adopt a multinational approach to ensure the protection of trade secrets is met and the level of protection is comparable to that set by the EU Directive.
Existing European Patents that are governed by an international agreement outside the EU will not be affected by Brexit. However it is unclear how the anticipated Unitary
Patent will be affected due to the UK not being integrated into the framework if it’s not in the EU.
It is unlikely that the UK’s exit from the EU will have any impact on “.co.uk” or “.com” names. However should the domain name contain “.eu” there may be an impact on ownership. The EURid site that acts as registry manager for “.eu” domains states that the registrant must, as an example, be an organisation within the EU or a natural person resident in the EU.
IP Rights are territorial by nature. All “Territory” definitions and the associated usage within all agreements with direct or indirect EU dimensions, including research and development, licencing, distribution, exploitation, patent pooling, co-existence settlement and enforcement agreements, should be reviewed and adjusted to fit the post-Brexit World.
The existing power to obtain an EU-wide injunction against infringement for EUTMs will no longer exist once the UK leaves the EU; it will only be possible to enforce UK trade mark and design registrations in the UK and to enforce EUTMs, registered and unregistered Community designs in Member States. Businesses need to be aware of potential infringement risk and putting into place sufficient measures of protection in different territories.
- Consider filing additional UK trade mark applications now to ensure there is separate registered trade mark protection in the UK alongside your EU registrations.
- Review the Territory clauses in your IP agreements.
- Analyse whether it is viable to put equivalent trade mark registrations into place where you are relying on unregistered trade mark rights for protection generally and to challenge EUTM applications.
- Conduct audits of your design portfolios to ensure any gaps in protection can be covered sufficiently.
- Make actual use of older trade mark registrations in other territories and keep evidence of use in case proof of use in the EU is required in the future.
- Continue to apply for national patents or traditional European patents until further clarity is given on the Unitary Patent.
- Review domain name portfolio and look at obtaining domain ownership in alternative “.com” or “.uk” sites rather than only “.eu” sites.