30 September 2019

Intellectual property Brexit checklist


In the event of a no-deal Brexit scenario, the UK would leave the EU immediately on 31 October 2019 with no agreement in place governing the withdrawal or the ongoing relationship between the UK and the EU.

Here’s the ultimate Intellectual Property (IP) Brexit checklist that will help tech companies navigate some of the uncertainties of a no-deal Brexit.

Verdict: UK IP right holders are at risk of losing EU rights (namely database rights and the ability to own an .eu domain name) and will need to maintain registrations across two territories to ensure ongoing protection for registered IP rights.

30 second summary: Registered EU Trademark (‘EUTMs’) and Registered Community Design (‘RCDs’) will cease to apply in the UK; however, the UK will plug this gap with an equivalent “child right”. UK companies should pay particular attention to any pending applications or pending proceedings involving EUTMs and RCDs. UK companies will lose their database rights in the EU and should ensure there are robust contractual restrictions around any use of any databases licensed out/made publicly available to mitigate against this. UK companies will also lose the right to hold .eu domain names and should look to transfer these to an affiliated EU entity.

Checklist:

  • Existing EUTM/RCD registrations: The EUTM/RCD will cease to apply in the UK after Brexit; however, the UK will automatically grant an equivalent ‘child right’ which will offer the equivalent UK protection and renewal dates of the UK child right will coincide with the corresponding EUTM/RCD. Proprietors will receive a notification of the UK child right being granted and can choose to opt out of receiving the UK child right. No additional fees required.
  • Pending EUTM/RCD applications: Review any existing applications which have not yet been granted. The EUTM/RCD granted pursuant to any applications pending as at the date of Brexit will not come into existence in the UK after Brexit. Applicants of pending EUTM/RCD applications as at Brexit date will not receive any notification, and must consider themselves whether they need to refile with the UK IPO to obtain equivalent protection in the UK and must apply for an equivalent UK protection (UK registered trade mark/design) / UK ‘child right’ within a specific period (currently 9 months) from the date of Brexit. The UK will recognise the filing dates and priority claims of the corresponding EU application. The additional fees will need to be paid by the proprietor in relation to the separate application made for an equivalent UK ‘child right’.
  • Pending EUTM/RCD proceedings: Monitor for updates if you are a party to pending proceedings involving a EUTM/RCD. It is presently unclear what the position will be and further details will be made available by the UK government on this; however, the EUIPO has confirmed that oppositions or cancellations based solely on UK rights will be dismissed.
  • Existing unregistered community design rights: These will cease to apply to the UK after Brexit. The UK government plans to introduce legislation to continue to offer mirrored protection in the UK for existing unregistered community design rights for the remaining period of protection with no action required. It is understood that this protection in the UK will continue post-Brexit Date without any action required by the rights holder.
  • New unregistered community design rights: These will cease to apply to the UK after Brexit. For a new right in an unregistered community design to subsist, it must first be made available to the public in the EU. Once the UK leaves the EU, unregistered community designs can only subsist if first made available to the public in an EU member state and not the UK. It is understood that the UK government plans to introduce and create a new unregistered design right in UK law to offer mirror protections for new unregistered community designs post- Brexit Date, called a ‘supplementary design right’. It is understood that this new equivalent right will arise automatically. Disclose new unregistered designs simultaneously in the EU and UK so as to try and obtain maximum protection.
  • Database rights: UK companies who invest in obtaining, verifying or presenting data in databases currently benefit from an unregistered sui generis EU database right. There is no requirement for EEA states to provide this right to UK companies post Brexit. UK companies should ensure there are robust contractual restrictions around any use of any databases licensed out/made publicly available to mitigate against this.
  • Domain names: UK companies will not be able to own .eu domain names after Brexit. The registry for .eu domain names and UK IP rights cannot be used to object to any infringement of an .eu domain name registration. UK businesses should consider transferring registrations now to an EU-domiciled entity (either a group company or service provider) in order to avoid the loss of any domain names.
  • UK designs and trade marks (registered and unregistered) and European patents: No Action Needed: These rights will remain largely unaffected by Brexit.

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