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As the Brexit-clock keeps ticking, what will happen to your IP rights in case of a ‘hard Brexit’?

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Although the European Union (EU) granted another Brexit delay to the United Kingdom, the Brexit clock is still ticking. And while Theresa May continues to try to find a compromise within the British government, the European Commission states that a ‘no-deal’ scenario is increasingly likely. With this in mind, have you already taken the necessary steps to protect your intellectual property rights in the event of a ‘no-deal’ Brexit?

A ‘hard Brexit’ will also have an impact on intellectual property rights which are mostly harmonized within the EU. In case of a ‘no-deal’ Brexit, the UK may no longer enjoy the same level of protection as the rest of the EU. Furthermore, the enforcement of intellectual property rights in the UK will also become increasingly complex.

So, which intellectual property rights will still be protected in the UK after a ‘hard Brexit’? Which steps does an intellectual property rights holder need to take to safeguard their intellectual property rights in the UK? Below you can find a short overview.

EU trademarks and designs

In case of a ‘hard Brexit’, the EU trademarks and designs which were registered at the European Union Intellectual Property Office will in principle no longer be protected in the UK.

The UK government has however committed itself to ensure a smooth transition, even in the case of a ‘hard Brexit’. Existing EU trademarks and designs would therefore be converted to British national trademarks and designs. For pending EU trademark and design applications the applicant would have the opportunity to refile the application within 9 months after Brexit with the British national Office, retaining the seniority date of the EU application.

These commitments however still remain draft legislation. In order to have legal certainty, it is advisable to file for a British national trademark or design in addition to an EU application.

Furthermore, if the seniority of an EU trademark or design was based on a British national trademark, the holder of that trademark will in principle no longer be able to call upon this seniority for the registration of the EU trademark. These trademarks could suddenly lose their priority over other, younger trademarks.

In case the UK leaves the EU without a withdrawal agreement, the Pan-European measures against infringements on trademarks and/or designs, such as a cease-and-desist order for the sale of infringing goods throughout the entire EU, will no longer have effect in the UK. If the holder of a trademark or design wants to apply measures against infringements in the UK, they will have to initiate separate legal proceedings in the United Kingdom. The question remains whether the measures which were already imposed by the courts in the EU in a pre-Brexit judgment will still be enforceable in the UK after Brexit. We believe that it is unlikely that these measures will still be enforceable in the United Kingdom post-Brexit.

Copyrights, databases and knowhow

If a company is a copyright holder (e.g. photos, music, software, construction schemes, etc.), there is no need to worry just yet. The same goes for database rights (which grant the producer the right to forbid others to use or copy their database) and for know-how or trade secrets (e.g. client listing, manufacturing processes, etc.), which have recently been granted an increased legal protection via an EU Directive (for more information on this subject, have a look at our previous newsletter).

Copyright, database and know-how legislation is currently harmonized by European Directives. These Directives were already transposed into British national law (e.g. “Trade Secrets Regulation” (SI 2018 No. 597)). These national laws will still be applicable after a ‘hard Brexit’, which means that a ‘no deal’ Brexit will not have immediate, drastic effects on holders of copyrights, databases and/or know-how.

However, it is important to keep in mind that the United Kingdom is free to adapt its national legislation after Brexit. Moreover, the UK will not be bound by the case-law of the European Court of Justice, which means that there could be a difference in interpretation and enforcement measures after a ‘hard Brexit’.

Companies should also note that the recently approved (and much debated) Directive on Copyright in the Digital Single Market will not be transposed into British national legislation and therefore will not impact copyright holders or service providers located in the United Kingdom.

European patents

The impact of a ‘no deal’ Brexit on patents will be limited. The rules on European patents are mostly harmonized in the European Patent Treaty that was signed by the United Kingdom individually, which means that it will remain applicable in the UK. A European patent is in fact no more than a collection of national patents.

The new European Unitary Patent, which will protect a patent by a single registration (similar to EU trademarks and designs) in all Member States of the European Union, will not protect a patent in the UK in case of a ‘hard Brexit’.

We will gladly assist you with an assessment of the impact of Brexit on your company.

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