Impact of Brexit on Industrial Property Rights
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|IMPORTANT UPDATE: According to the ratified withdrawal agreement between the EU and the United Kingdom, Union law will continue to apply to the United Kingdom for a transitional period ending 31 December 2020. Consequently, on 27 January 2019, the European Intellectual Property Office (EUIPO) has informed that the regulations on European Union Trademarks and Registerede Community Designs and their application instruments will remain in force until that date. You can expand the information here.|
Today, new general elections are held in the United Kingdom called by Prime Minister Boris Johnson, with the aim of strengthening its parliamentary majority and moving forward with the Brexit deal reached with Brussels in September this year. If the results grant an absolute conservative majority, Johnson has pledged to “get the Brexit done” on 31 January after 46 years being part of European Union.
Undoubtedly, this exit would affect the protection of industrial and intellectual property. The good news is that it is three years since the holding of the referendum in which a British majority opted for the exit of Europe and, in this time, the majority of the questions about what the new situation would be has been cleared up. But there are still many issues that remain in the air.
In this article different experts from ABG Intellectual Property have compiled what is known and what is not about the new scenario for the owners of industrial and intellectual property rights if, finally, Brexit occurs.
Impact of Brexit on Industrial Property Rights
Regardless of the exit agreement that could be reached between the United Kingdom and the European Union, the British country will continue to be part of the Madrid Protocol, the Hague system for the protection of international designs, the Munich Convention on the granting of a European patent and the Patent Cooperation Treaty (PCT). These are not community agreements.
Patents and Brexit: few changes
All the above agreements are outside the community framework, which means that, as until now, patents in the United Kingdom will continue to be granted by the United Kingdom Intellectual Property Office (UKIPO) and the European Patent Office (EPO), for national patents and for those requested through the PCT system.
In fact, patents already granted by the EPO will not be affected and those that are pending will continue to be evaluated based on the same criteria and will obtain the same rights.
The Supplementary Protection Certificates
By Marta Rodríguez (Department of Chemistry, Materials and Pharmaceuticals)
In 1992 the European Council approved the regulation on the creation of a Supplementary Protection Certificate (SPC) for medicinal products, which came into force in January of the following year. This instrument is therefore part of Community law and the United Kingdom has decided to transpose it into its national legal order after Brexit.
Therefore, at first it does not appear that the UK’s abandonment of the European Union will have serious consequences for SPCs and paediatric extensions.
However, it is important to bear in mind that, although the United Kingdom will continue to apply pre-Brexit Court of Justice of the European Union (CJEU) case law relating to SCPs, once the United Kingdom leaves Europe subsequent decisions of the CJEU will no longer be binding on the British courts. This may lead to a divergence between the UK and the European Union case law concerning SCPs.
What will happen to the SCPs already granted?
Until today, what is known based on the guidance published in this regard by the British government, is that SCPs already granted in the UK will take effect as before and the pending SPC applications will follow the usual grant process.
I am expected to have to file an SPC application after Brexit, how will I have to do it?
For new SPC applications filed after Brexit, it will be necessary to have a marketing authorisation for the medicinal product in the United Kingdom. This includes authorisations granted by the British Medicines and Healthcare products Regulatory Agency (MHRA) and centralised authorisations granted by the European Medicine Agency which have been converted into an equivalent authorisation in the United Kingdom.
However, in order to calculate the duration of the SPC in the United Kingdom, the relevant date will still be considered as the date of the first marketing authorisation either in the United Kingdom or the European Economic Area.
After Brexit, what will happen to pediatric extensions?
Something similar occurs with pediatric extensions. The application and the procedure will remain practically the same, with the only exception that, for new applications submitted after Brexit, it will no longer be necessary to provide evidence of authorisations for all member states of the European Economic Area.
Trademarks and Community Designs
27 January 2019, the European Intellectual Property Office (EUIPO) has informed that the regulations on European Union Trademarks and Community Designs and its application instruments will remain in force until 31 December 2020 (You can expand the information here). The following lines were prepared based on the information provided by the United Kingdom Intellectual Property Office (UKIPO) until the date of publication of this article. Based on the latest news, it will be necessary to wait until 1 January 2021 for its application . In ABG Intellectual Property we will be attentive to any news.
By Rodrigo Manzanares (Department of Legal & Litigation)
I own an EU trade mark and/or a Community design, what will happen after Brexit?
UE trademarks and Community designs which are registered and in force on the date of Brexit will automatically be converted into national rights in UK jurisdiction without any action needed by their owners, including non-payment of fees. This automatic processing will also apply to international registries designating the European Union.
In this regard, the British office has already carried out several drills for the dumping of the data on its systems. The massive addition of registrations to the British office will gradually be reduced as the owners of trademarks and designs resulting from this transformation who are not interested in maintaining their validity in the United Kingdom opt not to renew them.
I own a British trademark and/or design, what will happen after Brexit?
Of course, British trademarks and designs will lose their effect on the territory of the European Union after Brexit, and will no longer be prior rights for the purpose of preventing the registration or use of trademarks or designs in any Member State. Likewise, the previous European rights may not impede registration and use in the United Kingdom.
I have filed an application for an European trademark and/or design, but it has not yet been granted, what will happen after Brexit?
Applications for trademarks and designs pending on the date of Brexit shall be subject to a transitional application regime. Under that, holders of European applications or designating the European Union (international registrations) will have a period of 9 months to file fresh applications in the United Kingdom, keeping the priority date of the European Union right. In these cases, the usual fees of each office shall be paid.
Certainly, the trademark registration process is lengthy enough in time and, an application made at this time will most likely not be granted before the date of Brexit. However, in view of changes in the protection scheme, holders interested in marketing in the United Kingdom are advised to register their industrial designs as soon as possible. The processing is fast and it is possible to be achieved before Brexit. As a result, it will prevent unprotection in the UK and double taxation of fees.
Cloned rights: what will happen if, after Brexit, I want to preserve protection in the UK?
European trademarks and designs designated by European Union will acquire their own life as full British national registries following the aforementioned conversion. The files arising from such conversion are being named by the British office as “cloned rights”.
The new existence of these cloned rights will mean a bifurcation of titles to be protected and maintained. Thus, holders of European registries should take into account that, from the moment of Brexit, if they wish to preserve their right in all the remaining 27 Member States plus the UK, they must incur a double expense:
- On the one hand, they must pay the renewal fees of their European registries as before.
- On the other hand, they must pay the fees that the UK office prescribes for the renewal of British trademarks and designs.
In these circumstances, the owners will have to decide whether or not the United Kingdom is a commercially relevant territory for their interests, and proceed accordingly with the necessary renewals.
I am the owner of a European trademark that I only use in the UK, what do I have to do after Brexit?
Brexit will affect the territorial validity of the proof of use in opposition, invalidity and revocation proceedings before the EUIPO. The test assessment relating to the use of a trademark in UK territory will follow two totally differentiated paths depending on the temporal scope of such use:
- Use prior to the date of Brexit: The use of a trademark exclusively in the United Kingdom, in the period of the five years before Brexit, will be likely considered genuine and effective for the purpose of evidencing the use of trademarks with effects in the European Union.
- Use after the date of Brexit: The exclusive use in British territory of a European trademark or an international registration designating the European Union, after Brexit, shall not be valid for the purpose of assessing the proof of use of a trademark in EUIPO proceedings.
In these circumstances, holders of European rights who only make use of their trademarks in the United Kingdom should rethink their business strategy in order to decide extending their use to some or all of the remaining 27 Member States; otherwise, any procedure in which there is a debate on the use of a trademark will result in the automatic loss of such proceeding.
What will happen to Protected Designations of Origin after Brexit?
The Regulatory Councils of Protected Designations of Origin and Protected Geographical Indications (“PDO” and “PGI”, respectively) may be wondering if Brexit will entail any consequences for the validity and scope of protection of these rights. PDOs and PGIs are protection instruments that are obtained after a procedure with a first national phase and a second one at European level.
At this point there can be a substantial difference with the scheme that will be applicable to European trademarks and designs.
In the case of PDO and PGI, in the absence of an agreement between the United Kingdom and the European Union, producers / holders of these rights may have to initiate a procedure for obtaining protection in UK in accordance with the requirements to be established by that country (the British office has been ambiguous: “… Producers of existing EU GIs may need to apply to the relevant UK scheme to secure UK GI status…”).
These requirements, on the other hand, will presumably be the same as the ones currently set out in the European Community system and will be in line with the provisions of the World Trade Organization.
Therefore, in the absence of negotiated agreement, holders of these rights will possibly be forced to apply for protection at national level in the UK territory.
In the event of a peaceful Brexit through a withdrawal deal, several sources consulted indicate that PDOs and PGIs relating to European Union products would continue to be protected in the United Kingdom, and vice versa. However, that view is based on what a priori would be logical to agree between both parties, since there are currently no guidelines specifically on this scenario.
By Guillermo Menéndez (Department of Biotechnology and Life Sciences)
After Brexit, Community plant variety rights will no longer be valid in the UK territory. That is why the UK Department for Environment, Food and Rural Affairs (DEFRA) and the Community Plant Variety Office (CPVO) have published the planned measures to obtain plant breeders’ rights in the United Kingdom derived from granted or pending applications in the European Union.
The title of protection for my plant variety in the EU has been granted for at least two months
European Union legislation provides for a period of 2 months to appeal to the granting of a title of protection of a plant variety. For this reason, only titles granted at least two months prior to the date of Brexit that are definitively registered and in force will automatically become plant variety protection titles under UK law. It has not been announced that this automatic conversion will be subject to payment of any fees.
The protection title for my plant variety in the EU has been granted less than two months ago (or is still being processed)
Pending applications that have not been granted at least two months before the Brexit date will not automatically become plant breeders’ rights under UK law. In these cases it will be necessary to apply for a protection title for the variety in the United Kingdom territory before the Animal and Plant Health Agency (APHA).
This request must be made effective within a maximum period of 6 months from the date of Brexit. In this case, the same test for distinctiveness, uniformity and stability (DUS) may be used, maintaining the priority date of the European application as the effective date of the application in the United Kingdom.
What will happen to my new applications post-Brexit?
After Brexit date, it will be necessary to apply for separate protection certificates for the United Kingdom and the European Union from the Animal and Plant Health Agency (APHA) and the Community Plant Variety Office (CPVO), respectively
Ready for Brexit
The ABG Intellectual Property team constantly updates our knowledge and we are very aware of any national, community and international regulatory changes. In addition, we keep our clients informed of those modifications that affect their industrial and intellectual property rights. With or without Brexit, we will continue protecting innovation.