On the 23rd June 2016, the UK voted by a slim majority to leave the European Union. When Article 50 of the Lisbon Treaty is triggered, almost every British law will be affected in some way. Intellectual property (IP) law is no exception, especially given that so much of it is cross-jurisdictional.
Much depends on whether Britain opts for, or is pressured into adopting a ‘hard’ or ‘soft’ Brexit. If we end up with a Norwegian style model (‘soft Brexit’, which looks increasingly unlikely) then we will be forced to abide with most, if not all EU IP laws and policies, but we will have very little say as to their structure and implementation. If we leave the single market (‘hard Brexit’), many of our existing IP regulations may have to be rewritten to ensure both UK and EU rights remain enforceable.
Whilst nothing is certain, it would be prudent for IP right holders to take certain steps to ensure their IP rights are protected, both during the transition period as Britain withdraws from the EU and after the ‘divorce’ is final.
EU registered trademarks and designs
European registered trademarks and designs will be significantly affected by Brexit.
The European Union Intellectual Property Office (EUIPO) currently provides protection for registered trademarks and patents in all 28 member states. Once Britain formally leaves the EU, registered trademark and patent protection could cease, depending on whether or not legislation is passed, allowing protection to those already registered with the EUIPO only to the UK.
EU patent law is derived from the European Patent Convention (EPC) which is an independent treaty, separate from the EU. For instance, Switzerland and Turkey are both covered by the agreement and neither country is part of the EU.
Therefore, it is unlikely that EU registered patents will be affected by Britain leaving the EU.
The UK Intellectual Property Office has stated that works protected by copyright in the UK will still be protected when Britain leaves the EU as it is is party to a number of international treaties including the Bernie Convention.
It is likely therefore that Britain will be out of the EU by the time one of the most important EU initiatives of recent years comes into force – The Digital Single Market.
The Digital Single Market aims to harmonise the licence for digital goods and services across all member states. For example, if you have purchased access to Sky or Netflix, you can use access your service in any EU country. Whether the British Government elects to keep us in the single market for electronic purposes is anyone’s guess at the moment.
The issue of Brexit and trade secrets just got extremely interesting. On 27th May 2016, the European Council adopted a directive to protect undisclosed know-how and business information (known as ‘trade secrets’) against their unlawful acquisition, use and disclosure. It defines what constitutes a protectable trade secret and provides for a common set of remedies where a trade secret has been misappropriated. The directive was published in the Official Journal of the European Union on 15th June 2016. Under EU rules, each member state now has two years in which to implement the directive into domestic law.
Will this new directive be adopted? Again, the way Britain choses to leave the EU will dictate the outcome.
Enforcement of IP rights
Once Britain leaves the EU, IP right holders whose rights have been infringed will be unable to rely on UK courts to enforce or grant pan-European relief. This would result in litigants seeking an injunction and/or damages, having to instigate claims in both the UK and the EU member state where the breach occurred. This would be an enormous expense for the party who suffered the infringement.
Steps holders of IP rights can take to ensure their existing protection is maintained post-Brexit
IP right holders can take the following steps initially to protect their interests:
- Those with trademarks and design rights registered in the EU should also register with the UK Intellectual Property Office to ensure their IP rights do not lapse during or after Brexit;
- If you have been granted an EU-wide injunction, it may be possible to seek a supplementary UK injunction issued by a British court;
- Make sure any existing IP licenses or contracts will provide UK protection once Brexit is complete.
As with every area of British commerce, the effect of Brexit is unknown. It is therefore well-worth investing in having an IP solicitor look over your existing and proposed IP protections, licenses and agreements to ensure your rights will not lapse either during or after the transition period once Article 50 is triggered.
Saracens Solicitors is a multi-service law firm based in London’s West End. We have dedicated and highly experienced IP solicitors who can advise and represent you if wish to register intellectual property or enforce an IP right. For more information, please call our office on 020 3588 3500.
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