How Brexit has changed UK intellectual property (IP) laws

Following the Brexit transition period, what has changed for UK intellectual property (IP) laws? Andrew Jerrard, solicitor, Trethowans, answers the question.

If you had an EU-registered trademark/community design, you will have been granted an equivalent UK trademark automatically but what about EU trademark applications, patents and copyright? What happens to questions referred to the Court of Justice of the European Union (CJEU) from the UK and which courts can depart from EU case law?

What has happened to IP in light of Brexit?

The Brexit transition period ended at 11pm on December 31 2020. During this period, there was no change to UK IP laws.

After the transition period, the same UK IP laws and system continue to apply in the UK and the EU system continues without the UK. Only the UK Supreme Court, the Court of Appeal and certain specialist appeal courts may depart from EU case law (in England and Wales).

The UK may no longer refer cases to the CJEU and UK courts are not required to follow CJEU decisions; the UK Supreme Court replaces the CJEU as the final court of appeal. However, referrals made before the transition period ended are still bound by the CJEU’s decision.

Registered trademarks/design rights

Existing EU-registered trademarks/community designs do not cover the UK after the transition period but the UK has automatically granted an equivalent national UK registered trademark/design at no cost to the owner.

For EU trademark/community design applications existing at the end of the transition period, the applicant can re-file in the UK within nine months after the transition period and benefit from the earlier EU filing date for their UK application; however, there is a cost to re-file.

EU unregistered design rights

It’s not clear whether designs disclosed outside of the EU can have unregistered community design rights. This question has remained unanswered for over 18 years and the CJEU is due to answer it following a referral from the UK’s Intellectual Property Enterprise Court hearing the ‘Squeezamals’ case (involving plush toy designs disclosed in Hong Kong).

We therefore do not know whether designs disclosed in the UK after the transition period benefit from an EU unregistered community design right.

However, designs that benefited from unregistered community design right protection before January 1 2021 continue to do so for the remainder of the three-year term.

The UK has created a new ‘mirror image’ three-year ‘supplementary unregistered design’ right that may apply to designs first disclosed in the UK after the transition period. This ensures that designers still benefit from the same design rights they had before the transition period ended.

Designers should be careful about where and when they disclose their designs to ensure valid unregistered design right protection is available in both the UK and EU. Given the uncertainty, it may be preferable to arrange first disclosure simultaneously in the UK and EU (and elsewhere depending on local law).

UK unregistered designs

There has been no change to UK unregistered design right, save that designs created after the transition period by authors that are EU/EEA nationals/residents do not give rise to UK unregistered design right.

Patents

The patent system sits outside of the EU meaning there has been no change and the UK remains a member of the European Patent System.

Copyright

Copyright has not changed, however the UK courts may now deviate from EU law, causing protection based on UK works to be treated differently in EU countries.

Database rights

EU/EEA databases existing before the transition period ended are still protected in the UK but after the transition period, EU/EEA databases are protected only in the EU/EEA and UK databases are only protected in the UK.

Andrew Jerrard

trethowans.com