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. 

The Huddersfield Choral Society Rose

On page 31 of the programme for yesterday's concert by the Huddersfield Choral Society in Huddersfield town hall there is a picture of a beautiful rose. I've scoured the internet for an image of it but the best I can do is direct you to page 2 of the January 2011 issue of the Choral's newsletter which you can find on issuu.

The advertisement describes the rose as "floribunda in a deep mauve with a silver underside." It has been bred specially for the Society by a Mr. R Rawlins of Fixby to celebrate its 175th anniversary. The first 60 shrubs should be delivered from October of this year and will retail at £10 and there will be a second growing next year. After 2013 the rose will be available commercially from R V Roger Ltd. of Pickering. If you want one of those roses you should contact Jenny Lockwood on 01484 666827.

New plant varieties can be protected in the United Kingdom by registering the species with the Plant Variety and Seeds Office under the Plant Varieties Act 1997. Registration with the Office confers an intellectual property right known as "plant breeder's right". Registration confers the right on the holder to prevent:

• production or reproduction (multiplication),
• conditioning for the purpose of propagation,
• offering for sale, selling or other marketing, exporting, importing, stocking for any of the above purposes, or
• any other act prescribed for the purposes of that provision without his authority.

Alternatively, plant breeders in the UK can seek protection in all member states of the European Union by registering with the Community Plant Variety Office under Regulation 2100/04. The British government is party to the International Convention for the Protection of New Varieties of Plants which has established UPOV (The Union for the Protection of New Varieties of Plants) in Geneva. If you want more information on plant breeders rights you can read my article on Plant Varieties on my IP/IT Update website. If you have a specific issue relating to plant varieties you can contact me on 0800 862 0055 or by filling in my contact form.

Returning to the concert itself, I can only say that it was the best performance of the Choral that I have ever attended. Three works were performed yesterday:

• Stravinsky's Symphony of Psalms
• Jonathan Harvey's Messages, and
• Bruckner's Mass in E Minor.

Being a balletomane I was already familiar with such works as Firebird and the Rite of Spring. The Symphony of Psalms was exquisite, especially the setting of Psalm 150. On being told at the pre-concert talk that Harvey's Messages consisted entirely of the names of angels, I was somewhat apprehensive about that work. All I can say was that it worked and that it was eminently suitable for what I call the Huddersfield sound. If you want to know what I mean compare the Choral's Dies Irae in Verdi's Requiem with that of any other choir. It was. incidentally, the first time I had ever heard a cimbalom, a Hungarian instrument that can best be described as a sort of manual piano. However, for me the best part of the programme was the Bruckner mass at the end.

The concert was to have been conducted by Martyn Brabbins but owing to Brabbins's indisposition the Chorus Master Joseph Cullen took his place. From my perspective, Cullen did a very good job indeed.

Huddersfield Choral Society is one of our great institutions. If you want to follow the Society they are on Facebook, Linkedin and twitter. Now in their 175th season, they are certainly worth following.