Brexit: how will the departure of the UK from the EU affect IP?
British voters chose last week against continued membership of the European Union. Whilst the vote is technically not binding on the government or parliament, it is certain that the UK administration will inform the other member countries of the European Union that the country wishes to leave the EU. This provides for a transition period of at least two years during which negotiations will happen. At the end of the period, the UK will leave the European Union. Until then, the UK remains subject to EU law and obligations.
So what will this mean for intellectual property?
It’s actually difficult to say, because there are no precedents. There are a few international agreements (principally the Vienna Convention) in place which state that any acquired rights should remain in place. However not all EU countries have signed up to all of the relevant agreements. Much will depend on whether the United Kingdom remains part of the European single market with free movement of goods and services between European countries.
The information provided below is based on our current assessment of the situation. It could change and we shall try and keep this up to date. Whatever happens, the 24IP Law Group will retain its office in London as well as in other European countries.
Trade Marks and Designs
Currently trade mark and design protection in the UK can be obtained either through a national UK trade mark or design right protection or through a registration at the European Union’s IP office in Alicante. In recent years, many international companies have preferred to use the Alicante route since this protection covers all member countries of the European Union, including the UK, and is substantially cheaper than filing in each individual country.
Once the UK leaves, we assume that it will be possible to apply for a re-registration of EU trade marks and design rights in the United Kingdom, whilst maintain the original application and priority dates. This might happen automatically or there may need to be a separate request submitted. In any case, it is probable that once renewal fees need to be paid, then separate fees will need to be paid to both the EU’s IP office and the UK’s IP office to maintain the rights.
In the past a similar situation has occurred for trademarks registered under the international system governed by the Madrid Agreement. It was possible for holders of such marks to inform WIPO that they wished protection to extend to further territories after the break-up of the original country, such as the Soviet Union and Yugoslavia in the 1990s. We assume that this will be possible when the UK leaves the EU.
These are likely to be the least affected rights, at least at present, as the European Patent Office is actually a separate body from the European Union. It will be possible, even after Brexit, for patent applicants to designate the UK. It’s not clear what will happen to the proposed Single European Patent, which was designed to extend protection to all EU member states. The relevant agreement was expected to come into force in 2017, but may be delayed because of the UK vote. In any case, once the UK leaves the European Union it will no longer be possible to include the UK as part of this patent protection.
The EU has just started harmonising protection for copyright and neighbouring rights under its Digital Single Market initiative. No country in the EU requires registration of the rights and under the Berne convention, copyright protection extends to all member countries. There is therefore unlikely to be any major change to copyright protection at this stage.
The EU has been proposing to harmonise some further aspects of copyright protection over the next few years to introduce a single market for copyright protection. It is probable that the UK will not be part of his harmonisation efforts.
One of the major implications of the UK’s withdrawal will be the limitation of injunctions. It will no longer be possible to get a single injunction for infringement of a trade mark or design right covering a number of European countries including the UK. It will be necessary to go to the court in London to get an injunction to cover the UK and separately to a court in the European Union for an injunction to cover other countries in Europe. This is similar to the need to go to a Swiss or Norwegian court if the holder of the IP right needs protection in these countries.
Similarly, it will probably be necessary to file a request for border seizure measures in the future with both the European customs authorities and the UK’s Border Force.
Probably the most urgent item of work relates to licence agreements. Many recent IP licence agreements make the assumption that the European Union is a single territory and are valid for all countries in the European Union. It is only possible to divide up licences into different countries under a very limited set of circumstances. In the future, however, it is probable that the UK will be treated differently and licenses may need to take this into consideration.
Technology licensing may become more complicated as the United Kingdom will no longer be covered by the European Union’s rules on technology transfer and could adopt its own rules.
This is only a brief summary of the issues involved and does not represent legal advice. We shall update this information as the situation becomes clearer. In the meantime, the 24IP law group will be happy to work with you on the best IP strategy in Europe. We shall maintain our London office, together with our offices on mainland Europe, to provide you with the best possible service.