One of the many areas of uncertainty arising out of the UK's vote to leave the EU concerns intellectual property rights, and the extent to which these may be impacted by the UK's departure from the EU. Notwithstanding the planned Repeal Bill, Brexit is likely to have an effect on the registration, maintenance and enforcement of IP rights, and it is probable that a number of EU-wide rights (including EU trade marks and designs) will no longer apply in the UK following the UK's departure.
This article considers some of the possible implications of Brexit for three of the main categories of IP rights relevant to brand owners, namely: trade marks – which protect brands, designs – which protect aspects of the design of products, and copyright – which protects (among other things) literary and artistic works. It also sets out in brief a possible implication for EU-wide licences of IP.
Although the UK trade marks regime will be unaffected by Brexit, it is likely that EU trade marks will no longer be valid in the UK.
What this means for EU trade marks that exist as at the date the UK leaves the EU is currently unclear. It is expected that transitional arrangements will be introduced so that these marks will continue to be protected in the UK, but it is not yet known what form these arrangements may take, and whether this process would be automatic, or would be subject to any other conditions.
Following the departure of the UK from the EU, it is likely that EU trade marks will not cover the UK, meaning that any person wishing to apply for protection for their trade marks in the UK and elsewhere in the EU will need to apply to register separate UK and EU trade marks. Whereas an applicant could previously apply for simultaneous protection in 28 Member States including the UK, therefore, this will no longer apply.
In view of the uncertainties, owners of existing EU trade marks ought to examine their trade mark portfolios, and it may be advisable to apply for UK trade marks for key brands. In addition, it is possible that owners of EU marks may face difficulties in enforcing their rights in the EU where they have only used their mark in the UK and vice versa. As such, owners of EU-wide marks should ensure that their marks are used in both the UK and elsewhere in the EU to avoid complications.
As with trade marks, the current UK regime for the protection of designs will be unaffected, and designers will still be able to protect their works through UK registered and unregistered designs, and via copyright.
However, it is likely that registered and unregistered Community designs will no longer be protected in the UK. As with EU trade marks, transitional arrangements will be required if existing rights are to continue to be protected in the UK and, going forward, any person hoping to apply for registered protection in the UK and elsewhere in the EU would need to apply to register separate UK and EU registered designs.
Regarding unregistered Community design, it is likely that this right will no longer apply to works which are made available for the first time in the UK. Although this right only lasts for a short term, it is a valuable right for a number of industries - for example the luxury industry - due to the scope of protection offered by the right (which is broader than UK unregistered design, and includes surface decoration). This is an area of concern for designers, who may need to consider making their designs available in the EU first in order to benefit from protection.
Of the rights considered here, Brexit will have the least immediate impact on copyright. This is partly because copyright has only been partly harmonised across the EU, and because EU copyright Directives have been implemented into UK law. UK copyright works will also continue to benefit from international protection under existing international treaties.
Questions do remain as to what the effect will be on the UK of the EU's plans to develop a Digital Single Market, and the extent to which UK law may diverge from EU copyright law following the UK's departure. However, the implications for owners of copyright are less marked than for owners of EU-wide trade marks and designs, as identified above.
It is possible that certain EU-wide licences of IP – whether trade marks, designs, copyright or other rights - may no longer be considered to cover the UK. Much will depend on the way the licence is drafted, but an example of where there could be an issue would be where the territory of the licence is defined as being "the EU from time to time". Parties that rely on EU IP licences would be well advised to review the terms of such licences, and consider whether these need to be amended to allow rights to continue to be exploited in the UK post Brexit.
As with much relating Brexit, the exact implications for IP rights following the UK's departure from the EU is unclear. The future of IP rights are likely to be affected not only by the terms of any deal reached with the EU, but also by transitional arrangements agreed by the Government and UK domestic legislative developments. Businesses that rely on EU-wide IP rights would be well advised to identify their core rights, and consider whether any steps may be required to ensure that these are protected and enforceable following the UK's departure from the EU.
If you require further information on anything covered in this briefing please contact Emily Ryder (née Arnold) (firstname.lastname@example.org, 020 3375 7601) or your usual contact at the firm on 020 3375 7000. Further information can be found on the Intellectual Property page of our website.
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Farrer & Co LLP, July 2017