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. 

Brexit Countdown: What you should have done to protect your IP and what you can still do

Sheffield Central Library

Author Chemical Engineer
Licence Creative Commons Attribution-Share Alike 4.0 International
Source Wikipedia, Sheffield Central Library

Jane Lambert

IP Rights and Brexit  Sheffield Business and IP Centra, Central Library, 6 March 2019 18:00

Because intellectual property protects investment in branding, design, technology and creative output, any change in the nature and extent of the legal protection is likely to impact on the businesses that rely on such protection.  Since EU trade marks, registered and unregistered Community designs, geographical indications and Community plant variety rights will cease to apply to the UK upon its departure from the EU, Brexit will have a substantial impact on all those businesses.

For that reason, I have been writing and speaking about the consequences of Brexit even before the 2016 referendum (see Were we to go - what would Brexit mean for IP? 26 Feb 2016 NIPC Law). I contributed the chapter on IP to Helen Tse's Doing Business after Brexit,  I have spoken about the topic at leading law schools (see Implications of Brexit on IP Law 19 Jan 2018). I have followed each and every turn of the Brexit negotiations in my Brexit blog in order to advise my clients accurately and comprehensively (see Brexit - Why do I follow the Art 50 (2) Negotiations when I am an IP Lawyer? 26 July 2018).

It might be thought that everything that can be said about IP and Brexit has been said but, unfortunately, that is not the case.  Unless the notification that the Prime Minister gave to the President of the Council on 29 March 2017 is revoked or the notice period is extended before the 29 March 2019 the UK leaves the EU at 23:00 on that day. The impact of this country's departure on business will depend on whether the country leaves on that date and, if it does, on whether it leaves with or without a withdrawal agreement. As I noted in my latest Brexit Briefing we still have no idea of the terms or even the effective date of our departure.

Ever since the withdrawal agreement negotiations began I have advised businesses to prepare for all eventualities including a no deal Brexit.  I have advised them to review their patent, trade mark and design registration portfolios and apply for national or as the case may be EU registrations to fill possible gaps in their legal protection,  I have advised them to read their licences, franchise, joint venture and other agreements and to draft or negotiate contract terms to fill any lacuna.   It may be too late to do some of those things but there is still much that businesses can do.

My talk will list all the issues businesses will encounter when protecting their brands, designs, technology or creative output and the possible countermeasures. By the end of my talk business owners and managers will have a much better idea of possible risks (and maybe even a few opportunities) and the steps they should take.

If you want to come, register here.  It's free but you do have to book. If you want to talk about this subject call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.