Hunters’ Intellectual Property Department is a team of leading IP lawyers based in central London. The team offers a wide range of transactional services to help companies foster innovation through the creation, protection, commercialisation and management of their intellectual property and related rights. The team can also offer a world-wide trade mark and design right filing and watch service, as well as a domain name registration service in conjunction with our network of trusted trade mark attorneys and domain name registrars.
Q How does Brexit affect my Intellectual Property Rights?
A IP protection is based on a mixture of national UK, European and international treaty law. For now, the United Kingdom remains a member of the European Union and there are no immediate changes to the protection of intellectual property rights until the United Kingdom ceases to be a member of the European Union, even after the so-called Article 50 procedure has been invoked, which triggers a two year time window during which the UK and the European Union will negotiate exit terms.
Patents are governed by the European Patent Convention, which is not an EU treaty and will not be directly affected by the UK leaving the European Union. However, the UK will probably no longer be able to participate in the Unitary Patent and Unitary Patent Court system, which applies only to EU member states.
National trade mark law has been harmonised across the European Union based on EU directives. These directives have been implemented in the UK through national legislation which will be unaffected by the UK leaving the European Union unless and until it is amended or repealed. This is unlikely to happen in the short term because the law works well and IP rights will not be near the top of what will no doubt be a busy post-Brexit legislative agenda. What is more likely to happen is that trade mark law in the UK and the member states of the European Union will start to diverge over time. EU Trade Marks will be directly affected by the UK leaving the European Union. Once the UK leaves the European Union, new EU Trade Mark applications will no longer extend to the UK and a separate application for a national UK trade mark will then become necessary. The way in which customs authorities will deal with counterfeits based on EU customs border seizure procedures is also likely to change. The cost and administrative burden of managing a trade mark portfolio is therefore bound to increase.
Q What should I be doing now as a brand owner to protect my position?
A It may be prudent for brand owners already now to file new trade mark applications both for EU trade mark and UK national trade mark protection to avoid possible gaps in future brand protection coverage. European design rights will likewise be affected. Clients should undertake a review of distribution and licensing agreements as soon as possible to ascertain how these arrangements will be affected by Brexit.
Q At least I can always still bring a claim based on the English common law tort of passing-off?
A Yes, that is correct. However, the enforcement of English judgments in other EU member states will be affected by Brexit once the Brussels Regulation ‘Recast’ will cease to apply in relation to the United Kingdom. It is unclear for now what rules will apply to the enforcement of English judgments in member states of the European Union going forward.
Q And what about copyright law?
A The harmonisation of copyright law has traditionally been driven by international treaties rather than by European Community law. However, EU law has been gaining in importance in a number of areas related to copyright, for example, though the InfoSoc Directive and in the area of collective rights management. The biggest impact though of Brexit on UK copyright law will probably be that it will miss out on the future Digital Single Market.
Gregor Kleinknecht – Partner
Gregor’s expertise ranges across multiple practices. He leads a strong contentious and non-contentious international IP practice, focusing on brand protection, and the exploitation, protection and enforcement of trademarks, domain names, design rights and copyright; and a leading practice in art and cultural heritage law.
Contact Gregor here.
This information is based on the law in force as at 26 July 2016. Although we endeavour to ensure that the content is accurate and up to date as at that date, it is designed to provide general guidance only and is not intended to be comprehensive or to constitute professional advice. Specific advice should always be sought, and you should only rely on advice which is given, by reference to particular facts and circumstances.
If you have any further questions, please do not hesitate to contact our Solicitors, who will be able to assist you further.