It will be ‘business as usual’ for patents after Brexit

Patents and related intellectual property rights will be entirely unaffected by Brexit. This is because the UK will remain a member of the European Patents Convention, which sets up the European Patent Office (EPO). The EPO is an independent international institution and is separate from the EU.

This means:

1. Patent holders do not need to take any action, as all existing protection will remain in place.

2. The process for obtaining European patents will not change.

3. The process for enforcing European patents will not change.

At Cleveland Scott York, our experienced team of qualified European Patent Attorneys will continue to represent clients at the EPO, irrespective of the UK’s future relationship with the EU.

Trade Marks & Brexit – A Further Update

The UK’s departure from the EU has now been delayed until 31st October 2019, subject to us holding elections to the European Parliament, with an option to leave earlier if the UK ratifies the Withdrawal Agreement. This six month reprieve is very welcome, given that:

  1. The Withdrawal Agreement agreed between the British Prime Minister and the EU has been overwhelmingly rejected by Parliament, and
  2. There is still no consensus in Parliament as to which form Brexit should take, and if it should happen at all. Parliament is only clear that it does not want to see a “no-deal Brexit”.

As matters stand, the following scenarios are all possible:

  • The UK reaches an agreement with the EU by 31st October, beginning the transition period for implementing the Withdrawal Agreement until 31st December 2020, with this date marking the UK’s actual exit from the EU.
  • A further extension to the 31st October 2019 deadline will be sought, possibly to allow for a second referendum or general election to take place.
  • The UK crashes out of the EU on 31st October 2019 without a deal;
  • Article 50 is revoked and the UK remains in the EU.

We are following developments closely, and will continue to advise as matters develop.

Despite the political uncertainty, we do have more clarity around the fate of existing EU trade marks (EUTMs) when the UK leaves. Separate ‘cloned’ UK trade mark registrations will be created in the UK. These will mirror their corresponding EU registrations (or granted EU designations under the International Registration (IR) system), and there will be no official fee for this cloning process. The UKIPO recently clarified how the cloned UK registrations will be numbered – this will be by adding the prefix UK009 to the last 8 digits of the corresponding EUTM registration (follow this link).

In terms of timing, this will happen as soon as is reasonably practicable after 31st October (or later if this deadline is extended), or at the end of the transitional period if the UK leaves with a deal. In practical terms, therefore, the deal or no deal scenarios only affect the timing of this cloning process and not its substance.

Cleveland Scott York will take these cloned UK registrations onto our records without charge. Where we are currently responsible for existing EU registrations, we will automatically add the cloned UK mark to our records and let you know when we have done so. We are also happy to add UK registrations cloned from EUTMs managed by different Attorneys to our records.

The cloning process only applies to EUTM registrations existing on exit day, whether 31st October 2019 or 31st December 2020 (or any other day). In the case of EUTMs pending on exit day, applicants will have nine months within which to apply for cloned UK applications to be created from their pending EUTMs. There will be an official fee for this, which we understand will be the same as filing a new UK application.

Given the current state of play, there are circumstances in which brand owners should consider filing separate UK applications notwithstanding the cloning process. Our advice here is as follows:

  • Although the UK IPO has confidently claimed that cloned UK registrations will automatically be created from all existing EUTM registrations on exit day, we have no information about how it proposes to do this, and how long the process might take. In addition, it is not merely the creation of these cloned registrations which is relevant but the related administration which follows. Given that millions of cloned registrations will have to be added to the UK Register, we are concerned that there could be some delay while the process is completed and the Register may be in a state of flux for some time, particularly if the UK ‘crashes’ out of the EU on 31st October without a deal. A brand owner wishing to bypass the uncertainty caused by this can consider refiling a UK application now. This may be advisable if the UK is a particularly important market, or if the brand owner has a specific reason for wanting to secure an enforceable registration as quickly as possible, even in a no deal situation.
  • An EUTM filed now is unlikely to proceed to registration before 31 October 31st October, so an applicant may want to file simultaneous UK and EUTM applications to increase certainty and avoid having to apply for the pending EUTM to be cloned into a separate UK application within the 9 month window. Post-Brexit, separate UK and EU applications will of course be necessary in any event to secure protection in both jurisdictions.

We are also currently advising our clients to designate the UK as well as the EU within existing and future International Registrations. This is because the present provisions mean that an EU designation within an IR cannot give rise to a UK designation via the cloning process, but only to a UK national application/registration. Longer term, there are cost savings and administrative benefits to having the UK under the umbrella of an IR in this situation, rather than having a separate cloned UK registration.

If you would like any further advice regarding the implications of Brexit on your existing trade mark portfolio, whether your focus is before or after exit day, please do not hesitate to contact us.

In the meantime, we are continuing to monitor the situation and will keep you informed of developments.

By Jonathan CleggLorna Hobbs and Peter Houlihan

Updated 17 April 2019

Trade Marks & Brexit – An Update

Although the politics around Brexit is very uncertain, in fact the UK Government has been clear about what will happen to existing EU trade mark (EUTM) registrations should the UK leave the EU. The basic principle is that existing EUTM holders should not be disadvantaged by Brexit, and so separate rights will be created in the UK which exactly mirror all existing EU registrations, and no official fee will be charged for this. This will happen either, as soon as reasonably practical after 29th March 2019 (or later if the deadline for exit is extended), or at the end of the transitional period, if an Agreement with the EU is reached.

On this basis, we are not at this time advising clients that it is imperative to file UK applications to replace existing EU coverage in the UK. There are, however, a number of caveats to this advice, as follows:

  • There is not a lot of practical detail around how these separate UK rights will be achieved, how long the conversion will take, and whether the “cloned” UK registrations will be given separate numbers. Given that millions of EUTMS will need to be added to the UK Register, and given that many more EUTMs are filed each year than UK TMs, there may be a long period when the state of the register in the UK is in flux, possibly for many months, particularly if the UK “crashes” out of the EU on 29th March 2019, without agreement. We assume there are plans in place which will enable parties to take action through the Courts and the UK IPO against marks in the UK based on prior EU registrations during this period, but no details around this have been provided. For this reason, therefore, there is an argument that proprietors should consider refiling at least their most important marks in the UK to preserve their position.
  • The above only applies to registered trade marks and not pending applications. In relation to EU TMs still pending at the time of Brexit, or the end of the transitional period, we understand that a nine month window will be available for parties to clone an EU application into an EU and separate UK application. The implication is that a fee for this will be charged, although we have no information as to what that fee will be.
  • The position with regard to International marks designating the EU is a little different. The official advice from the Government that it needs to work with WIPO to resolve the issue of EU designations and whether they will apply to the UK after Brexit. Given the uncertainty on this point, it would be prudent for proprietors of international registrations designating the EU, who retain an interest in the UK, to consider filing separate UK applications as well, pending more certainty on this issue and in order to ensure rights in the UK are maintained.

If you would like any further advice regarding the implications of Brexit on your existing trade mark portfolio (whether with a view to maintaining your UK or EU trade mark protection), please do not hesitate to contact us.

By Lorna Hobbs

Draft EU Withdrawal Agreement – IP Provisions

On 14 November 2018, after months of negotiations, UK and EU officials agreed the draft text of an agreement on the UK’s withdrawal from the European Union. This includes provisions relating specifically to Intellectual Property, and the highlights are follows:

Existing registered EU trade marks and registered Community designs will be “cloned” onto the UK Registers

  • Whilst registered EU trade marks and registered Community designs will cease to be valid in the UK after the expiry of a transitional period (due to run until the end of December 2020), the UK will grant equivalent national rights in the UK, without any re-examination.
  • The Withdrawal Agreement confirms that the “cloning” of EU registered rights onto the UK Register will be carried out without the need for the owners of these rights to file any applications or take any other administrative steps.
  • The transposition of the EU rights onto the UK Register will not incur official fees.
  • The filing/priority dates of (and any seniority claims relating to) the EU rights will be maintained in the corresponding UK right. The first renewal date of the equivalent UK trade mark and design will correspond to the renewal date of the EU right from which the UK right arose.
  • The “cloned” UK trade mark created before the end of the transition period will not be subject to revocation on the ground that the corresponding EU trade mark had not been put to genuine use in the UK before the end of the transition period.
  • The owner of the equivalent UK trade mark will be able to rely upon the reputation acquired in the mark in the EU up until the end of the transitional period. Thereafter, any rights on the basis of reputation in the mark will need to be exercised on the basis of reputation acquired in the UK.

Option to “transpose” pending EU trade mark applications and Community design applications onto UK Registers on application

As envisaged in the case of a “no-deal Brexit”, EU trade mark applications and Community design applications pending at the end of the transitional period will not be automatically cloned onto the UK Registers, but the owners of these rights will have 9 months from the end of the transition period to apply to register an identical UK trade mark or design maintaining the filing/priority dates of the equivalent EU right.

International trade mark and design registrations

The Withdrawal Agreement also includes a commitment on the part of the UK to take measures to ensure continued protection in the UK of International trade mark and design registrations designating the EU in relation to which protection is obtained before the end of the transitional period. The Agreement does not include any provisions in relation to pending EU designations.

Unregistered Community designs

All unregistered Community designs which arise before the end of the transition period will also continue to be protected and enforceable in the UK for the remaining period of protection of the corresponding unregistered Community design. Since the UK law currently does not envisage the same level of protection for UK unregistered design as the EU regime, the UK will need to legislate in this respect.

Geographical Indications

The draft Withdrawal Agreement confirms that EU geographical indications, designations of origin or transitional speciality guaranteed, and traditional terms for wine, will remain protected in the UK “until the future economic relationship comes into effect and supersedes those arrangements”. Existing UK GIs will continue to be protected by the current EU regime.

Exhaustion of rights

The draft Withdrawal Agreement briefly states that IP rights which were exhausted both in the EU and in the UK before the end of transition period will remain exhausted both in the EU and in the UK. Goods will, accordingly, continue to move freely between the EU and UK during the transition.

Analysis of effect in UK

The provisions of the draft Withdrawal Agreement for the most part replicate the UK Government pledges in relation to IP rights in the case of a no-deal Brexit, but it is reassuring to see confirmation of the following:

  • That the status quo will remain until the end of transition period and that after the end of the transition period:
  • EU registered IP rights will be cloned onto the UK Registers;
  • Such cloned rights will retain the filing/priority/seniority dates of their EU equivalents;
  • The cloning process will incur no official fees for the IP rights owners.

The Withdrawal Agreement requires Parliamentary approval (and the matter is due to come before the House of Commons on Tuesday 11 December 2018). In the event that Parliament does not approve the agreement (and the EU/UK do not agree other arrangements), the UK will leave the EU on 29 March 2019 without an agreement. Our summary of the UK Government’s guidance notes on intellectual property in the event of a “no-deal” Brexit can be found here.

Please contact your usual CSY adviser if you have any questions about any of these issues.

By Magda Ostrowska

UK confirms it’s business as usual for patents after Brexit

The UK government recently issued guidance on the impact of a ‘no deal Brexit’ on patents and related intellectual property rights. The good news for rights holders and prospective rights holders is that it will essentially be business as usual for the foreseeable future.

For patents there are only a few aspects of law that could be affected since relatively little relevant legislation is derived from the EU. The areas in question are supplementary protection certificates and specific provisions on compulsory licences as well as certain exemptions from patentability and infringement.

In the event of a no deal Brexit the government has stated that the relevant EU legislation and/or its UK implementing legislation will be retained. Existing systems will therefore remain in place and will subsequently operate independently from the EU regimes. This means that existing rights and licences, including supplementary protection certificates, will remain in force automatically and there will be no significant change to legal requirements or application processes.

For the possible unitary patent and Unified Patent Court systems, assuming these systems do subsequently come into effect the UK will explore the possibility of remaining a member. If the UK were to withdraw, however, any existing unitary patents would give rise to equivalent UK rights and continued protection would be ensured. Further, enforcement of UK patents would be through UK courts, as it is now.

As a non-EU agreement there will be no change to the European patent application system or UK rights of representation.

The last question addressed is the issue of service addresses and legal professional privilege. On these points the guidance states that there will be no change.

Patent proprietors therefore do not need to take any action for the foreseeable future.

UK Government issues guidance notes on intellectual property for “no-deal” Brexit

On 29 March 2019, the UK is scheduled to leave the EU. Negotiations are ongoing between the UK government and EU regarding their post-Brexit relationship.

If these negotiations are not concluded by the exit date, the UK will leave without a deal (i.e. a ‘no deal Brexit’). In order to allow businesses and citizens to plan for this possibility, the UK Government issued technical notices on the 24 September 2018 setting out the position regarding IP rights in a no deal scenario. The main points to note are:

Trade marks

  • All existing registered EU trade marks will continue to be protected and enforceable in the UK by virtue of an equivalent UK trade mark (which will be created by the UK Intellectual Property Office).
  • Owners will be notified that a new UK right has been granted. Any owner that may not want to receive a new comparable UK registered trade mark will be able to opt out.
  • Owners of pending EU applications will have 9 months from the date of exit to apply in the UK for the same protection, retaining the date of the EU application for priority purposes.
  • The new UK right will be provided with minimum administrative burden.
  • The UK trade mark will then be treated as if it had been applied for and registered under UK law.
  • The Government will work with the WIPO to provide continued protection in the UK after 29 March 2019 for trade marks filed through the Madrid/International system and which designate the EU , including seeking practical solutions for pending applications.
  • Provision will be made regarding the status of legal disputes which are ongoing before the UK courts. More information on that will issue closer to exit.

Designs

  • The scheme described above to maintain protection in the UK for existing and pending EU registered trade marks will apply also to registered Community designs;
  • All existing unregistered Community designs will also continue to be protected and enforceable in the UK for the normal period of protection;
  • A new supplementary unregistered design right will be established in the UK for new designs that are disclosed after Brexit – this will ensure that the UK provides unregistered design protection exactly mirroring the scope of the unregistered Community design right.

Geographical indications

  • A new UK Geographical Indication (“GI”) scheme will be created for the UK.
  • UK producers who currently have EU GIs will be automatically transferred into the UK scheme and will obtain UK GI protection.
  • Unlike the position with EU trade marks and designs, the UK does not plan to automatically opt in EU producers who own EU GIs.
  • It is not certain that the EU will maintain the existing EU GI protection for UK producers.
  • Owners of GIs are advised to review whether seeking additional protection under, for instance, collective marks may be advisable

Exhaustion of rights

  • For the moment, the UK will continue to recognise European Economic Area-wide exhaustion of relevant IP rights. That will mean that, as now, goods placed on the market anywhere in the EEA will continue to be freely imported into the UK.
  • Conversely, the EU’s position looks likely to be that it will not continue to apply EEA-wide exhaustion. Businesses that export goods from the UK to the EU, after Brexit, may need to consider the IP implications and, where necessary, seek permissions from relevant IP owners.
  • The UK is currently conducting policy work to establish what its long term position will be on this issue.

Broadly, the UK Government’s policy on all IP rights simply reflects what has long been anticipated in the IP community and aims to give comfort to proprietors of EU IP rights that their rights in the UK will not be substantively affected by Brexit. These plans are also similar to what the UK aims to do even where agreement with the EU is reached. There are nevertheless still some details of the planned schemes to be worked out and we will continue to monitor progress of the necessary legislation.

Please contact your usual CSY adviser if you have any questions about any of these issues.

The impact of Brexit on UK Copyright – as reported by the EU Commission

At the beginning of this month, the EU Commission issued a report on the impact of Brexit on UK copyright. This indicates that, as of 30 March 2019, the various EU Directives and Regulations on copyright will no longer apply in relation to UK Copyright ownership.

Although UK copyright law is largely national, it is based on several EU Directives and Regulations. In its report, the EU Commission specifies the impacts on leaving the EU on UK broadcasters and database users, some of which we’ve summarised below.

The EU “Broadcasting” Directive concerning copyright applicable to satellite broadcasting and cable retransmission, and which essentially allows for trans-frontier broadcasting, will no longer apply to UK based broadcasters. Currently, UK  broadcasters are only bound by the laws of the Member State they are actually broadcasting from, and not by the laws of the Member States in which their signal is received. Post-Brexit, UK based broadcasters will have to secure clearance from all relevant copyright holders in the countries they are broadcasting to. At the same time, EU broadcasters to the UK will have to secure clearance from all relevant rights holders in the UK, before broadcasting here.

The EU’s “Collective Rights Management” Directive, which sets common standards for multi-territorial licensing of rights in musical works for online uses in the single market, will no longer apply to ensure the governance and transparency of UK based Collective Management Organisations/Collecting Societies.

The EU’s “Orphan Works” Directive will no longer apply to UK orphan works. This has standardised the rules on the digitisation and online display of  “ orphan” works held in UK cultural institutions, i.e. works including books, newspaper and magazine articles and films that are still protected by copyright but whose authors or other rightholders are either not known or cannot be located or contacted to obtain copyright permissions.

The EU’s 2017 Directive which enables visually impaired, blind or otherwise print-disabled persons to obtain accessible format copies from authorised entities in the EU will no longer apply to UK persons.

The EU “Online Content Portability” Regulation will no longer enable UK residents travelling to the EU to be assured of the equivalent provisions of access to the same content, on the same range and number of devices, for the same number of users, and with the same range of functionalities from their online content providers.

Finally, the EU’s “Database” Directive entitling UK nationals (without habitual residence in the EU) and UK incorporated companies to maintain or obtain a sui generis database right in respect of EU databases will no longer apply.

The above-specified anticipated consequences of Brexit are of course subject to any re-negotiation of terms of withdrawal, in the run up. The UK Government has also confirmed it will be addressing the final consequences of the Brexit agreement by updating national laws or establishing equivalent new national rights, so we await further developments on these areas of copyright law.

Authored by Joanna Larkey[:]

UK Joins the Hague Agreement for Industrial Designs

As of 13 June 2018 there will be more flexibility for UK and international IP holders wishing to apply for UK registered designs. Following deposit of its instrument of ratification in Geneva on 13 March 2018, the UK is acceding to the 1999 Hague Agreement Act. The accession will become effective on 13 June 2018, meaning that the UK can then be separately designated in international design applications.

The UK had been in discussions about joining the Hague Agreement for some time and the issue recently gained even greater significance in light of the Brexit vote. Alicia Instone has been working with the UK Intellectual Property Office through her activities with the Chartered Institute of Patent Attorneys to assist in making this a reality.

The Hague Agreement for industrial designs allows applicants to register a design in any number of the contracting parties through a single application. Applications are most frequently filed at the International Bureau at the World Intellectual Property Organisation and the system helps simplify and streamline international protection by enabling single-language applications and centralising fees. The UK is the 68th member of the Hague Union.

UK businesses have had to access the Hague Agreement since 2008 through the EU’s membership, but this is unlikely to continue following Brexit. The UK’s national ratification hence ensures that UK businesses, both pre and post Brexit, can benefit from the Hague Agreement and use it to pursue design registrations in the UK and the EU, without the need for separate representation.

Authored by Alicia Instone[:]

UKIPO publishes IP valuation study

The UKIPO (UK Intellectual Property Office) has published Hidden Value: a study of the UK IP valuation market, which questions why companies often fail to consider the hidden financial value of their intangible IP assets.

Researchers Martin Brassell and Jackie Maguire compiled more than 250 responses from a combination of IP-owning companies, valuers and intermediaries, finding that “there is a prevailing view that the number of IP valuations conducted by businesses is not currently at an optimum level, considering the economic importance of intangible IP assets.”

They concluded that:

  • The volumes of IP valuations have fallen “below what might be expected”, in the context of the high level of investment in creating intangible assets, and particularly when compared with practices relating to tangible assets;
  • The strongest influences on the volume of activity in situations where this serves an established need, are “factors outside the IP valuation market”;
  • “vertical relationships between intermediaries and valuers” and “weak searching behaviour” are likely to be key causes of market failings; and
  • The positive development of the market requires “additional incentives and/or education” and these should be aimed at “making the ‘business case’ for conducting IP valuation clear and incontrovertible.”

The study outlined a number of recommendations under the headings set out below:

  • “Use case studies to highlight the benefits to business of valuing their IP”;
  • “Develop a directory of IP valuation suppliers and their specialisms”;
  • “Tailor an outreach programme targeted individually at businesses, intermediaries and investors”;
  • “Research into links between intangible asset valuations and IP strategy;” and
  • “Voluntary IP statements and/or labelling.”

It’s good to note that the UK government are taking IP seriously, and understand the real value that IP can have to businesses and we hope that they take this same approach to the value of IP in their Brexit negotiations.[:]

European Commission Releases Position Paper on Intellectual Property Rights after Brexit

The UK’s decision to leave the European Union will have significant ramifications for intellectual property rights within not only the UK, but also the remaining 27 members of the EU.  The Withdrawal Agreement, governing the UK’s exit from the EU, will have to deal with the issue of intellectual property.

The European Commission, the EU’s executive body, have recently published a position paper setting out what they see as priorities for intellectual property rights to be dealt with in the Withdrawal Agreement.

Five main principles are outlined in the position paper.  These are:

  1. Continued protection in the UK of intellectual property rights having a “unitary character” after Brexit;
  2. That “procedure-related” rights (e.g. the right to claim priority) are protected when applying for equivalent rights in the UK;
  3. Applications for supplementary protection certificates in the UK made prior to the withdrawal date are completed;
  4. Protection granted for databases under EU law continues in the UK;
  5. “Exhaustion” effective before the withdrawal date is not altered after Brexit.

Of these, points 2-4 are somewhat specialised in nature.  It is likely to be the issues in relation to the fragmentation of unitary rights (item 1) and “exhaustion” (item 5) that will be of more general interest to rights owners.

Unitary Rights

Certain EU intellectual property rights, notably the EU trade mark and the registered Community design have a “unitary character”.  This means that they are single rights, valid across the whole EU, and have equal effect in all EU states.  The Commission’s view is that the holders of such rights should automatically be entitled to equivalent protection provided by a comparable UK right after Brexit.  The paper also asserts that such automatic entitlement should be free of cost for the rights owner, and administrative burden should be kept to a minimum.

Exhaustion of Rights

The principle of exhaustion of rights within the EU (“Community exhaustion”) holds that, once goods have been placed on the market within the European Union, the proprietor of an intellectual property right covering the goods no longer has the ability to restrict their further movement within the EU.  The paper proposes that rights exhausted prior to the UK’s withdrawal date will remain exhausted within the UK and the remaining EU states.

Opinion

The Commission’s proposals contained in the position paper appear to protect the interest of rights owners in a pragmatic and workable fashion.  We will report further developments as negotiations proceed.

Owners of EU rights will wish to be vigilant that such rights give effective and optimal coverage in the UK in the light of the finally agreed mechanism.  Cleveland Scott York will be pleased to discuss any concerns you may have.

Authored by Adrian Bradley

[:]