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Uncertainty remains for IP rights post-Brexit

Jul 27, 2018
Niall Tierney explores what the landscape for Irish intellectual property owners could look like post-Brexit.

It goes without saying that the decision of the United Kingdom to come out of the European Union will have significant consequences for many businesses trading with, and in, the United Kingdom, not least those businesses which have significant intellectual property rights. 

Intellectual property rights (IPRs) are fully protectable under British, European Union and Irish law. As far as pan-EU intellectual property rights are concerned, the treatment of these rights and how they will remain enforceable in the United Kingdom after Brexit is outlined in the draft Withdrawal Agreement, which is currently being negotiated between the two sides. Bearing in mind the overriding principle of “nothing is agreed until everything is agreed”, much uncertainty remains about how pan-EU IPRs will be treated in the United Kingdom after Brexit. 

Trademarks and industrial designs

During a House of Commons debate on 19 July 2018, Under Secretary of State, Robin Walker announced that the UK government will allow for the automatic conversion of pan-European Union trade marks (EUTMs) and designs (RCDs) into United Kingdom registered rights without the levy of additional fees. Not surprisingly, this announcement was welcomed by both domestic and international businesses. 

However, it is important to note that conversion will only apply to EUTMs and RCDs in existence before Brexit takes place next year on 29 March 2019. If an Irish business wants to protect its trademarks and designs through registration in the United Kingdom after that date, it will be necessary to apply for a separate right in the United Kingdom over and above any pan-EU right that business may desire to file. 

Patents

Unlike trademarks and designs, there is currently no pan-EU patent right. Patent protection in the United Kingdom is presently achieved by one of two methods: 

1. by filing for a UK-wide Patent through the United Kingdom Intellectual Property Office; or 
2. by designating the United Kingdom as a desired territory of protection through the European Patent Office in Munich, Germany. As the European Patent Office is not an EU institution, the rights it grants will not be affected by Brexit. 

However, one area where Brexit may have an impact is on the workings of Unified Patent Court (UPC), which will have the job of enforcing pan-European patents. The good news is that the United Kingdom has ratified the agreement to bring the UPC into effect. This means that, under the structure of the UPC, UK courts will be permitted to rule on disputes concerning pharmaceuticals and life sciences. That said, participation in the UPC is confined to Member States of the European Union. Accordingly, until agreement is reached between the European Union and the United Kingdom, the UK’s role in the UPC cannot be guaranteed.

Copyright

At present, it is not possible to register copyright, and there is no facility to secure un-registered copyright protection, in the EU. Instead, any business wishing to enforce copyright must do so on a national basis. Nevertheless, much of copyright law is harmonised throughout the European Union through a number of directives. The manner in which these directives are interpreted and enforced is overseen by the European Court of Justice (ECJ) whose rulings are automatically binding on all EU Member States. Given that the British government has explicitly indicated that it will not be bound by ECJ decisions post-Brexit, it is likely that a considerable divergence will develop between the European Union and the United Kingdom on matters of copyright law. 

Trade secrets and confidential information

On 27 May 2017, the European Union passed and adopted the Directive on the Protection of Trade Secrets to harmonise the myriad of Member State laws on the protection of trade secrets and to make it easier for businesses to prevent the unlawful use and dissemination of trade secrets and confidential information. After Brexit, the United Kingdom will no longer be bound by the Trade Secrets Directive. It may choose to develop its own trade secret law with the result that any trade secrets or commercially sensitive information passed to, or ending up in the hands of, a UK-based business or national may not receive equivalent level of protection than that in Ireland. 

Exhaustion of rights

Under EU law, where legitimately branded goods have been placed on the market within the European Economic Area, the brand/trade mark owner cannot use their trade mark registrations to stop the lawful importation of such goods into another EU Member State. This is because the brand/trademark owner is deemed of have effectively “exhausted” their rights. The United Kingdom may no longer recognise the ‘Exhaustion of Right’ principle post-Brexit, giving brand owners the ability to use their UK-registered trademarks to stop the importation of branded goods from the EU. Likewise, EU trademark owners may be able to use their registered rights to stop the importation of genuine branded goods from the United Kingdom.

Conclusion

There is no doubt that much uncertainty remains about how intellectual property rights will be treated after Brexit. There are significant provisions on Intellectual Property within the draft Withdrawal Agreement. However, given the current state of tension between the EU and UK, and the prospect of a ‘no deal’ Brexit, it is by no means certain that agreement will be reached on how both sides treat and review each other’s intellectual property rights. 

Niall Tierney is a registered intellectual property attorney and Director of Tierney IP.