Brexit breakdown of your IP rights!

So it’s been over 3 years now since the June 2016 Brexit vote. It is still unclear what’s going to happen although there’s no doubt that everyone is pretty sick of hearing about it. We apologise therefore for bringing it up again but what follows is a bit of important, and hopefully useful, advice to help prepare your business for Brexit, give you an understanding of your registered IP rights and explain how the EU’s exhaustion rights may affect you (don’t worry, we’re only going to cover the important bits!).

Firstly, in terms of the current position: the UK is due to leave the EU on 31 October 2019 (although don’t be surprised if this changes). It also appears that there will be no withdrawal agreement in place, meaning that we will have what has now become known as a “no deal” Brexit.

Trade marks

For those of you with EU trade mark registrations, you are likely to be wondering what will happen to them after Brexit. Well, the current position is that EU trade marks will generate new UK trade marks automatically and for free (resulting in EU and UK trade marks with the same filing and renewal dates). Whilst this is good news on the protection front it will mean that you will need to renew both registrations at the same time.

If you are considering filing or have an application currently going through the EU Intellectual Property Office, and if the application fails to register before the Brexit deadline, you will need to reapply for a separate UK trade mark (this will not be automatic). However you will have 9 months to file a new UK trade mark application and claim the same filing date as the filing your EU trade mark.

Registered designs rights

EU registered designs follow the same principles as the trade marks so if you have secured EU design rights already, they will generate UK rights as well, however you will need to be wary of renewal dates for both the EU and the UK. The same principle applies to registering EU registered designs (i.e. not automatic grant of a UK right) however it’s worth noting the design registration process can take roughly 4-6 weeks (which is much shorter than the 4-6 month process for trade marks) and so there is still time to secure EU designs, entitling you to equivalent UK designs.

With regards to unregistered design rights, although the UK has its own unregistered design rights the government will be introducing new legislation which follows the current EU rules and offers better protection for your designs, albeit for a shorter period of time.

Exhaustion of rights

Rights are said to be “exhausted” in circumstances in which there is a loss of the rights to control distribution and resale of a product after it has been placed on the market (within a specified territory by, or with the permission of the right’s holder).

As the UK is currently part of the UK the exhaustion of rights is currently observed in this country. Indeed it has now been confirmed that the UK will continue to recognise these rights after Brexit, so this means that rights exhausted in EU following B-day will also be recognised as exhausted by UK. However this may not be reciprocated, so rights exhausted in UK following B-day may not be recognised as exhausted in EU, meaning that permission to export to the EU will be required… are you exhausted yet?

To conclude

We will of course be keeping you up to date with all things Brexit (especially with the last minute extensions or possibly another election) however if you need any advice in the meantime or even a pre-Brexit IP audit, we would be very happy to assist. To book a meeting with one of our specialist IP lawyers, simply email info@briffa.com or call 020 7096 2779.

Written by Hasnath Ahmed, Solicitor