On 1 January 2021, the Trade and Co-operation Agreement (TCA) came into force and the general principles of EU law, existing EU treaties and EU free movement rights ceased to apply in the UK, after the transition period set out in the Withdrawal Agreement ended on 31 December 2020. Under the European Union (Withdrawal) Act 2018, EU regulations only continue to apply in the UK to the extent that they have not been modified or revoked by regulations under that Act.
The TCA itself had very little impact on IP rights – it provides minimum measures for IP protection with scope for implementing stricter measures. The minimum measures have already been implemented in the UK and EU. Under the TCA, intellectual property rights (IPRs) (both registered and unregistered) will continue to be protected to at least the standards required by the international agreements which the UK and EU are both parties to, and, in many cases, to a higher standard.
Set out below is a summary of some of the main implications of Brexit on some of the main IPRs.
EU Trade Marks & Registered Designs
The position in relation to EU trade marks and community registered designs is very similar.
From 1 January 2021, EU trade marks (EUTMs) and registered community designs (RCD) no longer cover the UK. Equivalent cloned UK trade marks and UK registered designs have been automatically created on the UK trade marks and UK designs registries respectively. The existing EU registrations continue to apply in the remaining 27 member states. The new cloned UK rights will be treated the same as any UK trade marks or registered designs that were applied for and registered under UK law. They will maintain the filing, priority, UK seniority and renewal dates of the original EU rights.
One important point in respect of the new UK trade mark, is that it will not be liable to revocation on the ground that its corresponding EU trade mark has not been put into genuine use in the UK within the 5 years before 1 January 2021. Thereafter, however, the continuing validity will be dependent on use in the UK. For those trade mark owners who rely on use in the UK for their EUTMs, further action may be required, as those EUTMs may now become vulnerable to cancellation for non-use in the EU.
Any existing pan-European injunctions granted based on EUTMs or RCDs will, in effect, continue to apply to the UK as the injunction will be treated as if it applies to the comparable trade mark.
The situation is slightly different for any applications for EUTMs and RCDs that were pending as at 1 January 2021. Those applications were not automatically cloned in the UK, and so applicants will need to re-file in the UK, pay the relevant fees, and, if they want to maintain the filing, priority and UK seniority dates recorded against the corresponding EU application, must do so within 9 months (from 1 January 2021).
It should be noted that all of the above also applies to existing and pending applications for international trade mark registrations designating the EU.
Unregistered Design Rights
From 1 January 2021, unregistered community design right (UCDR) is no longer available where the first disclosure takes place within the UK. Similarly, if the first disclosure of a design takes place in one of the 27 remaining Member States, the design will not be covered by UCDR in the UK. So, unless a design is made available to the public in the UK and EU simultaneously, there could be unauthorised copying of designs.
Three types of unregistered design right now exist in the UK from 1 January 2021:
- Continuing Unregistered Design (CUD): this is a new category, created so that any unregistered community design which was protected in the UK prior to 1 January 2021 will continue to be protected as a CUD for the remainder of the 3 year period attached to it. CUD is not protected or enforceable in the EU.
- Supplementary Unregistered Design (SUD): this is a new category that will provide similar protection to that conferred by the UCDR pre-Brexit, but only in the UK. An SUD will last for 3 years, and will protect both 2D and 3D designs, and will be established by first disclosure in the UK. First disclosure in the EU will not establish an SUD right in the UK.
- UK Unregistered Design (UKUDR): UKUDRs will continue to exist as they did pre-Brexit. UKUDRs provide protection for the shape and configuration of 3D designs for a maximum of 15 years from the end of the year in which the design was first recorded or an article was first made to the design, whichever happened first. However, a UKUDR will now only be available for residents of the UK or a 'qualifying country' (as defined in the Design Right (Reciprocal Protection) (No.2) Order 1989) and for businesses formed under the laws of the UK or a 'qualifying country'.
Patents
The protection of patents will remain largely unchanged. Granted patents will be unaffected by Brexit. Following grant and validation in the UK, European patents have, and will continue to have, exactly the same legal effect in the UK as national patents granted by the UK Intellectual Property Office.
Patents covering the UK will continue to be granted by both the UK Intellectual Property Office and the European Patent Office (EPO), and applications can be filed directly with either body, or can be made pursuant to an international patent application filed under the Patent Cooperation Treaty.
The UK will continue to be one of the 38 contracting states to the European Patent Convention and, if an application is filed with the EPO, on grant an applicant will be able to request validation in the UK as well as other countries of interest. Additionally, the UK will remain a member of the Paris Convention, which supports IP protection globally. Applicants of UK patents will still be able to subsequently claim the priority of that application for patent registrations in other countries, and vice versa.
Plans are still underway for the Unified Patent Court, which would enable proprietors of inventions to apply for a single, pan-European Unitary Patent covering most of Europe, and would create a single court to hear and determine patent disputes on a pan-European basis. Whenever the Unified Patent Court is finalised, the UK will not form part of it, and a pan-European Unitary Patent will not cover the UK.
Supplementary Protection Certificates
Supplementary Protection Certificates (SPCs) are national rights that afford additional protection to patentees and separate applications must be made in each European country. The Patents (Amendment) (EU Exit) Regulations 2019 transposed all EU SPC law into UK national law, and was designed to maintain the current systems and processes as far as possible. During the transition period, the UK's SPC regime remained the same, so any UK SPCs granted before 31 December 2020 will remain valid on the same term, and all pending SPC applications filed in the UK before 31 December 2020 will continue in the same way and will provide the same rights once granted.
From 1 January 2021, an SPC application can be filed based on any marketing authorisation (MA) which allows the patented product to be placed on the market in any part of the UK. It is expected that the application process, evidence and timelines for the UK will remain the same.
Prior to Brexit, the SPC protection period covered the period between the patent filing date and the first marketing authorisation which allowed the product to be first sold on the market in the EEA, subject to a 5 year cap. Post-Brexit, as far as UK law is concerned, SPCs will offer protection equivalent to the time between the patent filing date and the first marketing authorisation which allowed the product to be sold on the market in the EEA or the UK, subject to a 5 year cap.
Database Rights
The EU Database Directive provides for 2 forms of legal protection of databases:
- Copyright: this right subsists in a database where the selection or arrangement of the contents of the database constitutes the author's own intellectual creation.
- Sui generis or "database rights" (as it is more commonly known): this right subsists in a database where there has been substantial investment in obtaining, verifying or presenting the contents of that database.
Database rights which existed before 1 January 2021 will continue to exist in the UK and EEA for the rest of their duration (whether held by UK or EEA persons or businesses). Similarly, databases will continue to be protected through the laws of copyright.
However, UK nationals, residents or businesses who do not qualify for the right provided under the EU Database Directive (i.e. those who are not nationals of an EEA member state, or are not companies formed in accordance with the laws of an EEA member state and have their registered office or principal place of business within the EEA), will no longer be able to hold any database rights in the EU. This means that UK owners of databases will need to consider whether they are able to rely on alternative means of protection in the EEA (e.g. through licensing agreement or under the laws of copyright).
UK legislation will also be amended so that only UK nationals, residents or businesses are eligible for new database rights in the UK.
Exhaustion of Rights
The EEA single market means that goods placed lawfully in that market are allowed to circulate freely in the EEA. Since the UK has left the single market, the EU's rules on free movement of goods no longer apply in relation to the UK. Instead, the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019 apply to the exhaustion of IP rights in the UK. Under those Regulations, post 1 January, the position is that:
- Goods placed on the UK market by, or with the consent of, the right holder may no longer be considered exhausted in the EEA. This means that businesses exporting these IP-protected goods from the UK to the EEA might need the right holder's consent.
- By contrast, putting goods on the market in the EEA does, for the time being, continue to exhaust IP rights in the UK. So parallel imports into the UK from the EEA are unaffected.
Given that the approaches of the EU and UK are different, this position may well change. In fact, the UK government has announced that it will consult on this subject in early 2021.
It should be noted, however, that any IP right which was exhausted in the EU or UK on or before 31 December 2020 remains exhausted from 1 January 2021.
Domain Names
The main change to domain names following Brexit may appear quite small, but could have quite a significant impact on businesses.
Since 31 December 2020, UK-based businesses are no longer eligible to own or renew .eu domain name registrations. This means that UK based businesses operating under .eu domain names will need to look for ways to meet the new eligibility criteria, such as transferring ownership of the domain name to businesses or individuals based in the EU. This may well prove quite difficult and unduly burdensome for a lot of businesses, particularly if they do not already have an affiliated entity set up in the EU.
Any UK based .eu domain name registrants that had not already taken steps to transfer their domain names before 31 December 2020 will find that their domain names have been 'suspended'. During this period of suspension, the domain name can no longer support any service, so companies may be finding themselves with no website and no email capabilities. However, the domain names and their functions can be reinstated if the registration details are updated so as to meet the eligibility criteria. A grace period is in place until 30 June 2021 (this has just been extended from 31 March 2021) for all 'suspended' domain registrations to allow UK companies a little while longer to transfer their domain names to EU businesses or individuals.
However, if steps are not taken before, on 1 July 2021, EURid will notify all remaining UK registrants and their registrars that their domain names are no longer compliant with the .eu regulatory framework and those domain names will be allocated 'withdrawn' status. 'Withdrawn' domain names cannot support any services, and so those companies will lose their website and email capabilities relating to those domain names permanently. A small silver lining for those affected companies is that the 'withdrawn' status does not mean that those domain names will be available to any other entity straight away. However, on 1 January 2022, all the 'withdrawn' domain names will be revoked and made available for registration by other entities.
Any UK companies affected by the change to the .eu regulatory framework should make sure that they have therefore taken any actions necessary to meet the eligibility criteria before 30 June 2021, to avoid losing their .eu domain names and the services associated with those domains.
