What happens to European Union IP Rights after Brexit?

IP After Brexit from Jane Lambert

Although one of the long term objectives of Brexit is to reposition our trade with the wider world, British businesses of all sizes including many in Yorkshire and the Humber retain important operations in the 27 remaining member states and vice versa. Arts 54 to 61 of the agreement by which the UK withdrew from the European Union ("the withdrawal agreement") provide for the continued legal protection of those operations. On 19 Feb 2021, I was invited to discuss those provisions and their implementation to the Barnsley Business Village.

Many businesses applied for EU trade marks or registered Community designs rather than UK ones because they offered protection in 28 member states and not just one.  Those rights ceased to apply to the UK at 23:00 on 31 Dec 2020 when the transition or implementation period provided by art 126 of the withdrawal agreement expired but they remain in force in the 27 member states.  However, owners of EU trade marks should be aware that their registrations may be revoked under art 58 (1) (a) of the EU trade mark regulation "if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use."  

Art 54 (1) of the withdrawal agreement entitles the owner of an EU trade mark, registered Community design or Community plant variety to a comparable British trade mark, registered design or plant breeder's right without a fee or any fuss unless he or she opts out of that right. The Trade Marks Act  1994, Registered Designs Act 1949 and the Plant Varieties Act 1997 have been amended to provide for such rights.   Applicants for EU trade marks and registered Community designs which were not determined before 31 Dec 2020 have an additional period of 9 months to apply for a UK trade mark or registered design offering the same protection.

One very important change that occurred on 31 Dec 2020 is that courts in the United Kingdom are no longer EU trade mark or Community design courts.  Actions for infringement of EU trade marks, Community designs or Community plant varieties have to be brought in an EU member state such as the Republic of Ireland,  As one of my colleagues in chambers is a senior counsel of the Irish bar (the equivalent of a QC) who qualified as a trade mark attorney before reading for the Irish and English bars, my chambers can continue to represent British holders of EU trade marks and Community designs in the EU.    

i discussed these and other matters in my presentation to the Barnsley Business Village on 19 Feb 2021,  Earlier on Friday, I had been invited by Helen Wong to update my contribution to her book, Doing Business After Brexit A Practical Guide to the Legal Changes, which she first published in 2017.   Articles and presentations that I have already written on the subject are as follows:

• How Brexit has changed IP Law NIPC Brexit 17 Jan 2021 
• How Brexit has changed IP Law Presentation (70 slides) 27 Jan 2021 
• How Brexit has changed IP Law: IP after Brexit Handout 27 Jan 2021 
• SUDs (Supplementary Unregistered Designs) NIPC Law 13 Feb 2021 
• Geographical Indications in the UK after 31 Dec 2020 NIPC Law 30 Sep 2020 
• The Draft EU-UK Trade and Cooperation Agreement: What We Know So Far NIPC Brexit 26 Dec 2020 and
• The IP Provisions of the EU-UK Trade and Cooperation Agreement NIPC Law 30 Dec 2020.

Anyone wishing to discuss this article or the topic generally may call me on 020 7494 5252 during normal business hours or send me a message through my contact form. 

Launching The BradfordNetwork

Bradford City Hall

Author Curtis Malonowski Licence CC BY-SA 3.0 Source Wikipedia, Bradford

 

Jane Lambert

On 9 Feb 2021, I launched the BradfordNetwork with an online talk entitled What every Business in Bradford needs to know about Intellectual Property.  Because of the public health emergency, the network used Webanywhere Ltd's conferencing platform eventanywhere.  I was introduced by Steve Ding who is Head of Global Talent at Webanywhere.  I have known Steve for many years. When I first made his acquaintance, he was Chief Executive of Bmedi@.

Bmedi@ was the forum for much of the creative sector in West Yorkshire and later West and South Yorkshire.  It had a very diverse membership ranging from brand consultants to web designers. It included some of the brightest, most enterprising and talented individuals I have ever met.   Bmedi@ offered a wide range of services but the high points for me were the Third Thursday meetings at the Bradford Business and Innovation Centre with speakers from business, government and the universities on everything from 3D printing to Web 2.0.   Later Bmedi@ held monthly breakfast meetings at Barnsley Business and Innovation Centres at Wilthorpe and Cudworth and at the Digital Media Centre in Barnsley town centre, 

Although Bradford is overshadowed to a certain extent by Leeds it has a lot going for it.  Its university offered one of the first computer science degree courses in the United Kingdom and its School of Management is one of the country's oldest business schools.  The National Science and Media Museum is linked to the Science Museum in London, the Museum of Science and Industry in Manchester and the National Railway Museum in York.  It has a very young population and many of its residents have come from outside the UK.  Some of them have founded businesses which have become household names around the world.

Third Thursday worked well because the discussions took place over wine, pizza and Bombay mix. Obviously, we could not do any of that online but the platform has a breakout facility called the "exhibition hall" which is the next best thing.  Each breakout space (called a "table") has space for up to 4 occupants.  I went to the nearest table and was joined by Steve Ding, Alison Orr of Inngot and Robin Cramp of the Screen Industry Growth Network.

In our brief conversation, Steve outlined his hopes for the network.  Bmedi@ disbanded in 2011. It is still missed by many of its members. With the economy in deep recession, the need for the services that Bmedi@ used to offer has never been greater. Though it will be necessary to hold online meetings for the next few weeks Steve hopes eventually to have live meetings in a lecture room with pizza, wine and Bombay mix. I am very happy to help make that happen.

Among the services that Bmedi@ offered were patent clinics in Bradford and Barnsley,   I have never stopped holding monthly clinics on the second Tuesday of every month at the Barnsley Business Village in Wilthorpe. I should be very happy to revive the Bradford clinic.  Having held its first meeting, the BradfrodNetwork needs to announce a second in the next few days. After that, a constitution should be adopted and a committee elected.

Anyone wishing to discuss this article should call me on 020 7404 5252 during office hours or send me a message through my contact form.