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Dear God, make it end (Brexit, Brexit Brexit, Brexit, Brexit, Brexit.......)

Brexit continues to reverse-Midas-touch everything it can possibly reach.

However, we now have some clarity on a number of IP-related issues, these being:

  • Exhaustion/Parallel Importing

  • EU Trade Marks

  • EU Registered Designs

  • Unregistered design rights

  • Unitary Patents / Unified Patent Court

  • Address for Service

  • Attorney-Client confidentiality/privilege

Outlined below are some notes on these, summarising the current position:

EXHAUSTION/PARALLEL IMPORTING

The exhaustion of IP rights refers to the loss (or 'exhaustion') of the right to control the distribution and resale of a product, which occurs after it has been put on the market by the rights holder.

For example, if you hold a patent that covers a product, and (with your permission) the product is on sale, then another party can buy the product from your approved vendor, and then on-sell it as they wish, without you being able to stop them. Your right to stop them doing this stopped (was 'exhausted') when the item was first sold with your permission.

A parallel import is a legitimate/non-counterfeit product that is legitimately bought (so the rights have been exhausted as outlined above) which is then imported into another country. So, a legitimate product, legally sold in France, could be imported into the UK as a 'parallel import'. Currently this is legal, because the UK is part of the regional European Economic Area (EEA) exhaustion scheme, meaning that IP rights are considered exhausted once they have been put on the market anywhere in the EEA with the rights holder’s permission.

Absent of a deal that states otherwise, the UK government plans to have a one sided approach to exhaustion.

  • The UK will continue to recognise EEA exhaustion so the rules affecting imports of goods the UK will not change.

  • There may be restrictions on the parallel import of goods the UK to the EEA.

The government's advice is currently this: "Businesses undertaking such activities [i.e. parallel imports] may need to check with EU right holders to see if permission is needed".

EU TRADE MARKS

Existing registered EU trade marks will continue to be valid in the remaining EU member states (all those states that aren't the UK).

The on-going protection of existing registered EU trade marks in the UK is supposed to occur through the introduction of a brand-new, equivalent UK right. Essentially, all existing EU trade marks will be automatically converted to UK marks in the UK (so in the EU, they are EU marks, and in the UK, they are exactly the same, but separate UK marks).

Some sort of provision is also supposed to be made for ongoing legal disputes involving EU trade marks. Supposedly, more information will be provided on this before the point at which the UK exits the EU.

Applicants with an application for an EU trade mark pending at the time of exit will be able to re-file for a UK equivalent right under the same terms. This new UK application can retain the EU application date for priority purposes. They will have nine months from the date of exit to do this. However, they will not be automatically notified that this re-application process needs to be done.

The major result of this is that a lot of new trade marks will be added to the UK register without examination by the UKIPO. This does raise question such as when the non-use period (important for revocation/invalidity) runs from. That is, is it the date of being added to the UK register, or the date they made the equivalent EU application?

REGISTERED COMMUNITY DESIGNS

Basically the same as trade marks, above. New UK right for existing granted designs, opportunity to make a fresh application with same priority date for pending applications, etc.

The revocation/invalidity issue is not so important. However, registered designs have a one-year grace period. There is a possibility that the re-filing will be outside the one-year grace period from first public disclosure, although re-filed designs will be treated as having the same application date as the Community design, so this should in theory avoid any issues. However, again, rights-holders won't automatically be contacted, so will very much need to be on-the-ball in order to ensure no loss of rights.

UNREGISTERED COMMUNITY DESIGNS

UK, EU and third country designers should have continued protection for those designs already protected by an unregistered Community design right, as long as the design was first disclosed in an EU member state (this includes the UK up to the point of exit).

Designs which are disclosed in the UK after Brexit will be protected in the UK through the new supplementary unregistered design right.

After Brexit, existing unregistered Community designs will continue to be valid in the remaining EU member states, protection of existing unregistered Community designs in the UK will be provided for with no action required by the right holder, and provision is supposed to be made for on-going legal disputes.

Businesses will need to ensure simultaneous first disclosure in both the UK and EU in order to have both EU and UK unregistered Community designs.

UNITARY PATENT / UNIFIED PATENT COURT

The UPC depends on German ratification. This may not happen before 29 March 2019 (or possibly, at all).

if the Unified Patent Court is ratified and comes into force, the government has stated that "The UK will explore whether it would be possible to remain within the Unified Patent Court and unitary patent systems in a ‘no deal’ scenario."

The Government's guidance note identifies the following implications of the Unified Patent Court and unitary patent coming into force, and the UK needing to withdraw from one or both systems:

  • Businesses will no longer be able to use the Unified Patent Court and unitary patent to protect their inventions within the UK.

  • Existing unitary patents will give rise to equivalent UK patent protection to ensure continued protection in the UK.

  • UK business will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the contracting EU countries. However, in the UK, businesses will only have the option of protecting their inventions using national patents (including patents available from the European Patent Office) and UK courts.

  • UK business will still be open to litigation within the Unified Patent Court based on actions they undertake within the contracting EU countries if they infringe existing rights.

  • EU business will no longer be able to use the UPC and unitary patent to protect their inventions within the UK but will be able to apply for domestic UK rights in the same way that they can now (via the UK Intellectual Property Office and the European Patent Office, which is non-EU).

The Government appears to envisage a scenario where the UK is part of the UPC (e.g. if Germany ratifies before 29 March 2019) but then leaves when Brexit happens.

ADDRESS FOR SERVICE

UK right holders generally have a UK address for service. Some EEA business, organisations or individuals may also have a UK address for service. There will be no changes to the UK address for service rules.

ATTORNEY-CLIENT CONFIDENTIALITY / PRIVILEGE

Legal professional privilege is given to communications between registered intellectual property representatives and their clients. This means that in legal proceedings in the UK, for example, such communications are considered confidential and will not, generally, be shared with those on the other side of the dispute.

UK Patent Attorneys are registered intellectual property representatives.

Legal professional privilege also applies to UK registered Trade Mark attorneys. This right currently extends to representatives who are not based in the UK but who are on the ‘list of representatives’ for the EU Intellectual Property Office for trade marks and designs. This list essentially covers attorneys from other EEA countries.

The Government does not anticipate any immediate implications for UK, EU or third country businesses. The current rules will remain in place at the point the UK exits the EU.

There will be no changes to the UK privilege rules.

However, it is not clear if communication between a UK client and a representative on the 'list of representatives' will remain privileged.

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