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UK’s approach to protecting and enforcing design rights

Global Head of IP David Stone speaks to Lexology Learn and discusses why protecting and enforcing design rights in the UK is becoming a lot more attractive, as well as new measures being introduced by the Intellectual Property Enterprise Court. He also looks at where there is room for improvement in the English courts.

Trade Marks, Designs & Copyright: IP Review

Welcome to our Annual Review of developments relating to trade marks, copyright and designs during 2019. We have selected a number of the reports that we have published over the course of the last 12 months, commenting on issues ranging from the latest guidance on the boundaries of trade marks and designs through to a number of interesting questions on copyright protection in the light of developing technology and business models. This year’s Review mentions a couple of cases in which we acted, including in a website blocking action for Nintendo in relation to sites selling devices seeking to circumvent encryption measures, and an important case for Sky in the European Court of Justice relating to trade marks.

We also include a brief update on the Brexit position. Now that the Withdrawal Agreement has been ratified and the UK has left the EU, we are in the transition period. During this period, which will end on 31 December 2020 (unless it is extended, albeit the UK Government has said this will not happen), the status quo will be preserved. There will be no change in how IP rights will be protected and enforced during the transition period and, more specifically, EU Trade Marks and Designs will continue during the transition period to extend to the UK. As part of our Brexit preparations, we have set up Mishcon de Reya IP B.V., a trade mark practice based in The Netherlands. Mishcon de Reya IP B.V. is a wholly owned subsidiary of Mishcon de Reya LLP and will allow us to ensure continued representation in relation to EU Trade Mark and Design matters before the EUIPO following the end of the transition period. We will continue to update you on Brexit developments throughout the year.

Click here to view the pdf version of our Review.

We hope you enjoy reading the Annual Review. Please get in touch if you have comments or queries on any of the topics raised.

Trade Marks

Compared to previous years, trade mark law and practice in 2019 focussed to a much lesser extent on questions of infringement and enforcement. Instead, the key cases raised questions relating to clarity and precision of trade mark specifications (and whether this can be a ground of invalidity of a registered mark), and alleged bad faith during the trade mark application process. […read more]

Copyright

In a continuing trend, 2019 saw the CJEU issue a series of decisions following referrals from Member State national courts on various issues under the Copyright Directive and related Directives. This looks set to continue in 2020 with the CJEU due to hear more copyright referrals. […read more]

Design

Alongside an important referral to the CJEU relating to ‘first disclosure’ for Unregistered Community Designs, the implications of the Supreme Court’s Trunki decision continue to be felt in the UK Courts. […read more]

Brexit

The UK left the EU on 31 January 2020.  The EU and UK reached a revised Withdrawal Agreement which includes a transition period ending on 31 December 2020.  During the transition period, the status quo continues to apply in relation to IP rights, with EU trade marks and designs continuing to extend to the UK. […read more]

Other developments

Other interesting developments over the last year relate to competition law considerations in relation to brands and online marketplaces.

Brexit and the implications for your Intellectual Property Rights

What will the Brexit mean for your intellectual property (IP) rights? Will Britain leave the European Union (EU) without a deal? Or will the Prime Minister manage to get the British Parliament to vote in favour of a Plan B-deal? The Brexit will have consequences for trademark rights, design rights, copyright and patent rights that involve the UK and the EU. Start prepping to protect your IP before Brexit!

The Brexit does not just impact organizations doing business in or with the UK from a commercial trade perspective (e.g. customs and import). You should also think about the ‘crown jewels’ of your organization (e.g. trademark rights, design rights, copyrights or patent rights) covering the European Union.

Brexit will impact every company having intellectual property, licenses and distribution agreements within the EU or UK scope.

Although the uncertainty about the Brexit remains, you should know that whatever happens, you should start preparations. For instance, what happens with the UK coverage of your EU trade mark and design registrations? Should you amend the territorial scope in your intellectual property contracts? A mere reference to the ‘EU’ may become difficult to interpret. This blog outlines the potential implications concerning your intellectual property rights following a Brexit.

Impact of Brexit on European Trade Marks and Designs

EU trade marks and designs are granted by the EU Intellectual Property Office (EUIPO). Currently, companies and individuals owning a registered EU trade mark or design have their trade mark or design right protected across all EU member states including the UK.

After the Brexit, existing EU trade mark and design registrations will no longer include protection in the UK. However, even in case of a ‘no deal-scenario’, the UK government ensured that the rights in all existing registered EU trade marks and designs will continue to be protected and enforceable in the UK by providing an equivalent trade mark or design registered nationally in the UK.

If you have pending applications for trademark or design rights in the EU at the Brexit date, you may refile your application with the UK Intellectual Property Office under the same terms for a UK equivalent right. For a period of 9 months from exit, the UK government will recognize filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application.

Impact of Brexit on Copyrights

Various international treaties (such as, the Berner Convention and the WIPO Copyright Treaty) govern the protection of copyright. Under these rules, countries provide cross border copyright protection. These rules are luckily not dependent on the UK’s membership of the EU. As a consequence, copyright protection in the UK for EU protected works will largely remain unchanged.

What about database rights and other EU specific IP legislation?

The EU copyright system is based on EU legislation so it only extends to EU member states. Although the protection rights under EU legislation will be preserved in UK law, cross-border IP protection mechanisms will be different. For example, in the event of a no deal-Brexit, there will be no obligation for EU member states to provide database rights to UK businesses. As a result, owners of UK database rights may find their rights unenforceable in the EU. So companies may need to consider other forms of protection for their databases.

Impact of Brexit on Patents and supplementary protection certificates

Only a few areas of UK patent law are derived from EU legislation. Probably the most important issue here is patented pharmaceutical products and chemical compounds. EU law provides for an additional period of protection after a patent has lapsed, the so-called ‘supplementary protection certificate’.

In addition, EU law provides for compulsory licenses to be granted for UK manufacture of a patented medicine for export to a country with a public health need. Also, EU law demonstrates that certain studies, trials and tests using a patented pharmaceutical product will not be regarded as an infringement of the patent.

Luckily, regardless of the Brexit, any relevant EU legislation (including its implementation in UK law) will remain. This means that the supplementary protection certificates, compulsory licenses and exempted studies and trials will be kept under UK law.

What about the Unitary Patent?

Under the European patent regime, a European patent application essentially forms a bundle of national applications. Each application needs to be validated per EU member state. The Unitary Patent will be one inseparable right covering 26 EU countries. The UK is one of those 26 countries. They ratified the Unitary Patent system only in April 2018 which indicates their desire to be part of this system in spite of Brexit.

However, the Unitary Patent protection cannot be separated from the general principle of the EU’s Internal Market. As a consequence, and especially in the event of a ‘no deal-Brexit’, it is questionable whether the Unitary Patent protection will remain applicable to the UK once it has left the EU. If not, it means that businesses seeking patent protection in the UK will still need to commit to the national UK patent system.

Exhaustion of IP rights after Brexit

Another topic for your business to consider, is the so-called exhaustion of intellectual property rights. ‘Exhaustion’ limits intellectual property rights. Once an IP protected product has been legitimately put on the market anywhere in the EU, the IP rights (e.g. prevent the resell or other commercial use) over such product can no longer be exercised because these rights are exhausted.

In a ‘no deal-scenario’, products rightfully placed on the UK market after Brexit, will not be considered exhausted in the EU. As a result, if your company exports products from the UK to the EU you may still require the IP owner’s consent.

To discuss potential effects of the Brexit on your IP rights, please do not hesitate to contact Lukas Witsenburg from Penrose. Email: l.witsenburg@penrose.law or telephone: +31 (0)20-240 0710.