What does Brexit mean for your IP rights?
Brexit has been a fact ever since the Brits voted to leave the EU in June 2016. For the moment, Britain is still a member of the union, and from a legal viewpoint, the situation is thus unchanged – but it’s only a matter of time before Britain activates article 50 and formally exits the EU.
The situation entails quite a bit of uncertainty – both for the Brits and the rest of the EU, but also for you as a rights owner. What will be the consequences of Brexit, and how will it affect your IP rights? In the following, we give you an overview and pin point a few issues where you, as a right owner, should be extra vigilant.
Good news first: There are expected no changes for patents issued by the European Patent Office (EPO).
As you know, EPO issues patents on the basis of the European Patent Convention – an intergovernmental agreement acceded by both EU countries and non-EU countries. The convention is autonomous from the EU, and the Brits will therefore still be part of the EP collaboration after they exit the union. EP patents validated in Britain will thus still be in effect.
In return, it looks like Brexit will have great effect on the future EU patent. As you may know, the enactment of the EU patent and the appertaining patent court has already been adopted by the EU, but needs to be ratified by at least 13 member states, including Germany, Britain and France, before the enactment comes into force. According to the plan, Britain was supposed to ratify the enactment in the fall of 2016, but after Brexit this will not happen. There is therefore great uncertainty as to when the EU patent will be in force – and if it will even become a reality, now that Britain is no longer part of the collaboration.
EU trademarks and EU designs
Both EU trademarks and EU designs are unitary rights. They are handled by the European Intellectual Property Office (EUIPO) and registrations are automatically valid in all member states of the EU.
When Britain leaves the EU, trademarks and designs issued by EUIPO will no longer have effect in Britain, and as a rights owner you are therefore forced to consider other options when it comes to protecting your rights.
It’s expected that there will be a transitional period where owners of registered EU trademarks and designs are given the option to extend their registration through a national application in Britain. This must be done within a set date – otherwise, the registration will no longer have effect in Britain. The particularities of the transition is yet to be determined, and we will have to wait for an official statement on the rules.
Brexit will thus increase expenses for rights owners, as they will have to apply for protection in both the EU and nationally in Britain. If the British market is of great significance to you or your company, you should already be laying a strategy on how to best protect your rights.
Furthermore, rights owners must be vigilant of the requirements of use for EU trademarks. 5 years after registration, trademark owners must be able to document genuine use within the EU. After Brexit, Britain will no longer be part of the EU, and if a mark has only been used in Britain, the requirements of use will not be fulfilled.
Contrary to trademarks and designs, there are no collective system for handling copyrights – the protection is automatically granted and requires no application or registration.
The copyright rules are, however, highly harmonized within the EU, and the Court of Justice of the European Union (CJEU) has done their part to establish uniformity in the union. After Brexit, Britain will no longer be subject to the CJEU and it is therefore expected that the British courts will start making their own rules for copyright.
This may already have come into play in regards of Britain’s limited protection of industrial designs such as furniture. As we’ve previously written about, Britain was reprimanded by the CJEU for not offering the same protection of industrial designs as the rest of the EU, which has led to a booming market for replica furniture. Britain was instructed to change their laws, but after Brexit they are no longer bound by the CJEU and it is therefore unclear whether they will actually proceed with the change of law.
Nonetheless, the loophole for buying cheap replica furniture from Britain will be closed. As of now, customers can use the EU rules on free movement of goods within the union to legally buy replica furniture and have it shipped to their home address, but since Britain will no longer be part of the union, such purchase will now be a copyright infringement.
If you have licensed you trademark, signed a distribution agreement, or otherwise entered into an agreement concerning use of rights, you may have to adapt your contract. Most contracts will specify the area in which the contract is valid, and in many cases this will be the EU. After Brexit, Britain is no longer part of the EU, and it may be necessary to edit the contract as to ensure agreement of the geographical scope of the contract.
As it appears from the above, Brexit has entailed a string of challenges – not just for the Brits, but also for rights owners in the rest of the EU.
It is of the utmost important that you, as an owner of a EU trademark or design, are attentive to the future changes, and that you plan ahead to secure your rights in the best possible way.
If you need assistance on assessing your options, or if you have questions about Brexit in general, you are welcome to contact us.
By Mia Storm