The paper on trademarks gives the future position on registered Community designs and unregistered Community designs, the industrial design rights that cover the EU. Under EU regulations, trademarks are granted by the EU Intellectual Property Office and protected by Regulation (EU) 2017/1001 on the EU trademark. Trademarks are protected across all member states, and rights can be registered through the Madrid and Hague systems, which protect the designs in up to 113 territories.

Should the UK and the EU fail to reach a deal, individuals or organisations with outstanding applications at the time of exit will have nine months from the date of the original application to apply separately for UK protection. This will require that they refile with the Intellectual Property Office using the normal application process. The government does stress that it will ‘recognise filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application. Right holders taking this step will need to meet the cost of refiling the application in accordance with the UK application fee structure.’

The holders of trademarks granted by the EU will continue to be protected by being provided with an equivalent trademark or design registered in the UK ‘with minimal administrative burden’, which will from then on be subject to renewal in the UK and can be ‘assigned and licensed independently from the EU right’.

Designs registered under the Madrid and Hague systems will continue to have protection. The government has pledged to work with the world intellectual property organisation (WIPO), a UN agency dedicated to ‘promoting creative intellectual activity and for facilitating the transfer of technology related to industrial property to the developing countries in order to accelerate economic, social and cultural development’.

Unregistered Community designs, property rights governed by Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, are design features such as surface decoration and product shape. The government will take steps to protect existing designs by bringing into force a ‘supplementary unregistered design right’.

Patents

UK legislation on patents is largely separate from EU legislation, which offers specific provisions for biological technology and pharmaceuticals, including a ‘supplementary protection certificate’ that provides additional protection after a patent has run out.

If there is no deal, relevant EU legislation will be retained and any UK legislation which supports existing legislation will remain unchanged and ‘all other EU legislation relevant to patents and supplementary protection certificates will be kept in UK law. This will ensure UK law continues to work in respect of biotechnology patents and applications, compulsory licensing arrangements, and exceptions from infringement for the testing of pharmaceutical products’.

The government states that no action is required on the part of the right or license holder and both pending applications and new applications will continue to be treated as before. However, the applicants may need to familiarise themselves with any changes to the regulation of human and veterinary medicines and chemicals.

The EU’s Unified Patent Court, which remains to be ratified by Germany, may or may not come into force. The government provides two scenarios in which the Court either operates, in which case the UK will need to consider its involvement; or is never ratified, in which case no changes will be made.

Exhaustion

Exhaustion, or the loss of exclusive distribution or resale rights of a product, is presently covered by the European Economic Area (EEA) exhaustion scheme, which normalises exhaustion across the EEA once IP is put on the market with the right holder’s permission.

The government states that the UK will continue to recognise this process in order to provide continuity for businesses, and that the present rules governing this activity will remain unchanged. Parallel imports, non-counterfeit products imported to a country where IP has been exhausted, will continue from the EEA. However, parallel imports from the UK to the EEA may fall under restrictions, and businesses are advised to check with EU right holders to see if permission is necessary.

Guidance: Trade marks and designs if there’s no Brexit deal is here 

Guidance: Patents if there’s no Brexit deal is here 

Guidance: Exhaustion of intellectual property rights if there’s no Brexit deal is here 

Report by James Bunney