IP after Brexit: consequences and checklists

The United Kingdom may have officially left the European Union but it remains within the EU's legal framework during a transition period that will not expire until at least 11pm UK time on 31 December 2020. (The transition period can be extended by one or two years, however, the UK government has stated that it will not agree to any extension.)

Even after the transition period comes to an end, the UK's intellectual property laws and the extent of protection provided to rightsowners will remain largely the same as most IP rights covering the UK are national rights. Moreover, EU intellectual property laws have already largely been adopted into UK law or will otherwise be retained post-Brexit.

However, Brexit will have important consequences for IP in the UK. Here are some of the headline points to consider:

• Registered EU trade marks and Community Registered Designs will no longer cover the UK, but the UK will automatically create new comparable UK trade marks and registered designs.
• Owners of pending EU trade mark applications that have not proceeded to registration by Brexit will have nine months to apply for comparable UK trade marks and claim priority from the pending EU trade mark (the same applies to pending Community Registered Designs but there should be a relatively small number of these).
• There may be some loss of future IP protection caused by the UK and the EU ceasing to provide reciprocal protection to IP created by each other's nationals and/or first published in each other's territories – although potentially this could be resolved in any trade deal agreed during the transition period. The IP rights this impacts include unregistered design rights and database rights.
• Areas in which the EU's and UK's IP laws could start to diverge in the short- to medium-term, including the recently adopted Digital Copyright Directive – which the UK government has stated it has no plans to implement.
• The UK will no longer be part of the new Unitary Patent and its involvement in the proposed new Unified Patents Court (a quasi-EU institution) is now open to doubt.

We set out below a checklist of actions to take in the run up to the end of the transition (which we refer to as "Brexit"):

In the run up to Brexit

• Review important IP agreements in case these may need clarifying or may not provide the necessary rights post-Brexit. Significant issues are likely to be rare, especially as UK legislation has been enacted to make it clear that licences and consents which cover the UK prior to Brexit should still be treated as covering the UK after Brexit (even if, for example, the licence is expressed to cover 'the EU') and that references to EU trade marks and Community-registered designs are to be treated as also referencing any comparable UK rights that are created post-Brexit.
• Ensure IP agreements currently in negotiation adequately deal with Brexit. The UK legislation mentioned above only applies to agreements existing as at the end of the transition. This means that a licence or other agreement which concerns EU rights or otherwise covers the EU which is being negotiated in the run up to Brexit should include explicit terms as to whether or not it is intended to cover the UK and any future UK comparable rights.
• Ensure customs notifications will still apply in the UK and the EU. At the moment IP owners can file one application (typically with the custom authorities of their home state) which will cover the whole of the EU. After Brexit, IP owners will need to have separate applications in place for the UK and the EU. If their current application has been filed through HMRC, then they should consider filing one through the customs authorities of another member state prior to Brexit. If their current application has been filed with a non-UK customs authority then they should consider filing one with HMRC.
• Consider whether Brexit may impact ongoing litigation and EUIPO disputes. For example, the EUIPO (European Union Intellectual Property Office) has confirmed that after Brexit it will disregard UK trade marks and other rights that have been relied on in oppositions filed before Brexit.
• Consider whether any current cross-border business activities could infringe third-party IP rights post-Brexit. The scope of protection of IP will largely be maintained post-Brexit but there are certain cross-border activities that currently do not infringe IP which may do so post-Brexit. These include trading in goods parallel imported from the UK to the EU and the cross-border transmission of copyright or database right protected works.

In the immediate aftermath of Brexit

• If you have pending cancellation actions against EU trade marks and Community-registered designs then you should consider filing equivalent cancellation actions against the comparable UK rights that will be automatically created. EU trade marks that are subject to pending cancellation actions will automatically give rise to UK comparable rights on Brexit but an equivalent UK cancellation action will not automatically arise. Cancellation applicants will want to consider filing a cancellation action against the UK right as soon as possible after Brexit.

In the months after Brexit

• Identify and record details of UK comparable trade marks and registered designs that have been automatically created to replicate existing EU rights.
• Within two months: transfer .eu domain names in the name of a UK companies to an EU-based company. Otherwise the EURid (the EU's domain name registry) will withdraw these domains and they will no longer be able to support websites, emails or other services.
• Within six months: ensure renewal deadlines of new UK comparable rights are not missed. If the renewal date an EU trade mark or Community design falls after Brexit then a separate renewal fee will need to be paid for the comparable UK right, even if the renewal fee for the EU rights was paid prior to Brexit. Owners of new comparable UK rights will be given at least six months after Brexit to make sure the renewal fees have been paid, so if the renewal date falls in the first six months post Brexit then extra time will be given to pay the UK renewal fee.
• Within nine months: consider filing UK trade mark applications and claiming priority for those EU trade mark applications that were pending on Brexit day.
• Within 12 months: consider whether to record security, licence and other interests against newly created comparable UK right when these interest are already recorded against the equivalent EU rights. If these interests are recoding against the UK rights within this time frame then any assignment or grant of rights to third parties will be subject to the rights recorded.