Unsure, lost, unclear, puzzled, confused or baffled about your intellectual property post Brexit then don’t be! At a breakfast event co-hosted by Briffa and ACID yesterday, attended by SME’s within the creative industries, ACID Affiliate Lawyer William Miles launched the Briffa Brexit Fit Kit as he guided delegates through some practical steps to future proof IP.
The current position – On 18 March 2017 an initial Draft Withdrawal Agreement was published by the EU and an updated Draft Withdrawal Agreement has now been agreed by EU leaders and Cabinet (Articles 54-61 cover IP). If there is a deal on voting day (11 Dec), we will be out of the EU and there will be a transition period until Dec 2020. If there is no deal, the future is unknown.
DESIGNS – Currently there are UK and EU registered design rights, both monopoly rights lasting for 25 years as well as UK unregistered design protection lasting for 10 years from first sale (subject to a licence of right in the last 5 years) which do not cover surface decoration and EU unregistered designs lasting 3 years which include surface decoration.
Post Brexit? UK Registered & Unregistered Designs – there will be no change BUT there is a new additional design registration system which can be used to protect designs in 67 countries. It is called the Hague System
Post Brexit? EU Registered Designs – EU Designs, registered before the end of the transition period, will automatically generate a new UK Registered Design (same filing and renewal dates), this will be generated automatically and be free. Broadly the same process will apply in a “no deal” scenario.
Post-Brexit EU Unregistered Designs (Deal scenario) – Those currently relying on EU Unregistered Designs publicly disclosed before the end of the transition period will benefit from a new UK equivalent right for the remaining period of protection (though the UK still must provide a mechanism for this. The main difference between UK unregistered design right and EU unregistered design rights (both of which arise automatically) is that the UK unregistered design right does NOT provide protection for surface decoration.
Post Brexit EU Unregistered Designs (No deal Scenario) – All EU Unregistered Designs existing on B-Day will continue to be enforceable in the UK for the remainder of their term and there will be a new UK unregistered design right mirroring the Unregistered Community Design (i.e., to include surface decoration), this will be known as the Supplementary Unregistered Design Right.
On Unregistered EU designs’ protection, Dids Macdonald, CEO of ACID said, “We are still seeking urgent clarity from Government on the scenario where on April 1st designs are first disclosed in the UK. As it stands now, UK designers, unless the designs are simultaneously disclosed in the EU, will NOT be able to rely on protection in 27 EU states. This is unacceptable.”
TRADE MARKS – Currently, UK and EU Trade Marks are perpetual monopoly rights (subject to use), renewable every 10 years. There will be no change for UKTMs and the Madrid Protocol can be used for international applications.
Post Brexit EU Trade Marks – EUTMs registered before the end of the transition period will automatically generate new UK trade mark (same filing and renewal dates) – this will be automatic and free.
CONTRACTS – Key contractual considerations as a result of increased trade barriers should be assessed as to their commercial impact. Monitoring currency fluctuations will also have a bearing when negotiating new contracts to risk manage changes in the pound’s value. Examining the territorial scope of agreements will also be critical – clarity is essential considering whether the UK is carved in or out needs careful consideration. Looking at grounds to terminate agreements on “material adverse change” or “force majeure” need close examination within current and future agreement.
William Miles, a Partner of Briffa Law said, “We might leave with a trade deal in place, we might not. There might be a transition period, there might not. But one thing is certain, now is the time to start preparing yourself for B-Day and what better way than to check whether your IP is in a healthy place and how it might be affected by the biggest political event of a generation?”