BREXIT and IP

Professor David Musker

Queen Mary University of London
What is “BREXIT”?
What stage have we reached?

2016 – Referendum
2017 – UK invoked “Article 50” on 29/03/2017
2020 – UK left EU on 31/01/2020

WE ARE NOW IN THE AGREED “TRANSITION PERIOD”

2021 – End of “transition period”. Currently no trade deal.

Enabling Legislation

The European Union (Withdrawal) Act 2018, as amended by the

European Union (Withdrawal Agreement) Act 2020
• Repeals & substitutes for the European Communities Act 1972
• Retains all existing EU legislation in force in the UK
• With such changes as are necessary
• These can be made by Statutory Instrument
• Specifies effect of existing CJEU judgments
• Having force of UK Supreme Court judgments
• But certain lower courts can overrule
What is the current situation?

• No change to the IP laws

• Still valid in the UK are:
• EU Trade Marks
• Community Designs
• International designations of EU
• Decisions of the Court of Justice
What happens on 01/01/2021?

• EU laws cease to have effect in the UK

• EU Trade Marks and Community Designs cease to
extend to UK
• Equivalent UK rights are created automatically

• NOTE: It is possible for the “Transition Period” could be

extended again due to COVID-19
Copyright

• Copyright is a national law system

• UK remains a Berne Convention member State, like EU
• Existing EU copyright regime will operate in UK
• will the UK implement Case C-683/17 Cofemel v G-Star?
• If not, Case C-28/04, Tod's v Heyraud will no longer apply to UK-originating
works, so FR, NL may apply reciprocity against UK designers
• New EU Digital Copyright Directive will not be implemented – UK
is therefore already slightly divergent
Sui Generis Database Rights

• Harmonised EU National system

• Existing EU/EEA databases will continue to be
protected in UK
• After 1 January 2020,
• only EU/EEA databases will be protected in EU/EEA
• only UK databases will be protected in UK
• No effect on databases protected by copyright
European Patents
European Patents

• European Patent Convention is not a European Union system

• Was originally intended for UK to be a founder member before UK joined EU
• Contains many Member States which are not in the European
Union, e.g.
• Norway, Liechtenstein, Iceland in the EEA, and Switzerland also in the Single
Market.
• Turkey in Customs Union with EU
• Macedonia, Albania (which may one day join)
• UK will remain a member of the European Patent System,
European Patents will continue unchanged
Future “Unitary Patents”

• Unitary Patent would be an EU single patent

• Unified Patent Court would be a “central” jurisdiction
• Should have started by now, BUT
• German Constitutional Court rejected the ratification
• UK has now WITHDRAWN it’s ratification
• Will therefore need to be amended, which will take
some years
• UK will not be part of the system
Future UK status
• All States covered by
European Patent
• EPC Members States
• Single Market

• European Union

• Unitary Patent and

Unified Patent Court
Future “Unitary Patents”

• Unitary Patent would be an EU single patent

• Unified Patent Court would be a “central” jurisdiction
• Should have started by now, BUT
• German Constitutional Court rejected the ratification
• UK has now WITHDRAWN it’s ratification
• Will therefore need to be amended, which will take
some years
• UK will not be part of the system
EU Trade Marks & Designs

• European Union Trade Marks and Community Designs

are EU instruments
• EUIPO is an EU Agency
• All EU designs and trade marks cover the UK
• All countries also have separate national registration
systems
• National and EU laws are closely harmonised
After BREXIT – existing EU registrations

EXISTING
• Same law will continue to apply RIGHT
• EUIPO system continues without UK
• UK national systems continue as now
• Existing EU trade marks and designs will EU UK
RIGHT RIGHT
not cover UK, and
• Equivalent UK national rights are
automatically created – no cost to owner
After BREXIT – existing International

• Equivalent UK national rights are EXISTING

INTERNATIONAL
automatically created – no cost RIGHT
to owner
• NOT UK designation – separate INT/
INT/
UK renewal fee required EU UK
RIGHT RIGHT
• Dates will be retained
After BREXIT – pending EU

EXISTING APP
• Applicant can re-file in the UK
• Transition period of 9 months
• Dates will be retained
• UK application will then be UK
APP
granted separately
• NOT free for applicants
EU UK
RIGHT RIGHT
After BREXIT – pending International/EU

• Applicant can re-file in the UK EXISTING

INTERNATIONAL
• Transition period of 9 months RIGHT

• Dates will be retained

• UK application will then be
UK
granted separately APP
• NOT free for applicants

INT/ UK
EU RIGHT
RIGHT
Existing Unregistered EU Designs

• Existing Unregistered Community EXISTING

RIGHT
Designs will no longer cover UK
• But an equivalent “Continuing” right
will be created in the UK
EU UK
• Effect will be the same, except that RIGHT RIGHT
the two rights must be separately
litigated
• All such rights will end in 3 years
Future Unregistered EU Designs

• Unclear whether designs disclosed outside EU

(e.g. in UK) can have EU Unregistered Design
rights – UK & EU have failed to agree
• UK has created a “mirror image” 3 year
“Supplementary Unregistered Design” right
• May apply to designs first disclosed after 1
January 2021 – if first disclosed in the UK
Future UK Unregistered Designs

• At present, designs qualify for this right if the designer

or owner is a UK or EU national (or from New Zealand
or Hong Kong SAR)
• For designs created after 1 January 2021, EU
nationality/residence will not be sufficient any more
Geographical Indications

• UK will set up a national register of protected

geographical names
• All GIs currently registered in the EU will be ported onto it
automatically, free of charge
Effects on professional practice
• UK nationals will lose the right of representation at EUIPO
• But might be granted discretional nationality waiver
• An EU place of business will be required as well as an EU qualification
• Likewise representation rights before the EU Court of Justice
• Representation rights before EUIPO continue “in all stages” of an existing
procedure (e.g. application)
• UK IPO will continue to allow an EEA address for service for 3 years
• For UK nationals resident in the EU, and vice versa, the existing “mutual
recognition” scheme for professional qualifications will change – a current
consultation is ongoing.
Specific UK Legislation
• The Design Right (Semiconductor Topographies) (Amendment) (EU Exit) Regulations
2018, SI 2018 No. 1052
• The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit)
Regulations 2019, SI 2019 No. 605
• The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations
2019, SI 2019 No. 638
• The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019, SI 2019
No. 265
• The Trade Marks (Amendments etc.) (EU Exit) Regulations 2019, SI 2019 No. 269
• The Patents (Amendment) (EU Exit) Regulations 2019, SI 2019 No. 801
• The Customs (Enforcement of Intellectual Property Rights) (Amendment) (EU Exit)
Regulations 2019, SI 2019 No. 514
Specific UK Legislation (1)
• The Design Right (Semiconductor Topographies) (Amendment) (EU Exit) Regulations
2018, SI 2018 No. 1052
• The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit)
Regulations 2019, SI 2019 No. 605
• The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations
2019, SI 2019 No. 638
• The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019, SI 2019
No. 265
• The Trade Marks (Amendments etc.) (EU Exit) Regulations 2019, SI 2019 No. 269
• The Patents (Amendment) (EU Exit) Regulations 2019, SI 2019 No. 801
• The Customs (Enforcement of Intellectual Property Rights) (Amendment) (EU Exit)
Regulations 2019, SI 2019 No. 514
• The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020, 2020 No. 1050
Thank You!

• Professor David Musker

• d.musker@qmul.ac.uk