Intellectual Property Implications of Brexit 2020

IP Rights in Post-Brexit Era

Dr. Maria Chetcuti Cauchi | Published on 30 ene. 2020

intellectualproperty

9th January 2020 witnessed the UK Parliament voting, by a majority of 99, in favour of United Kingdom’s Withdrawal Agreement Bill, effectively paving the way for the UK to leave the European Union (“EU”) on the 31st January 2020 (“Brexit”). Brexit is on our doorstep! 

“We can reassure our customers that there will be no immediate impact when the UK departs from the EU on 31 January 2020,” said Tim Moss, CEO, UKIPO. “Our updated guidance is intended to help businesses and individuals navigate through the transition period to January 1, 2021, when almost 1.4 million EU trademarks and 700,000 EU designs will be converted to UK rights.”

The UK will now enter a period of transition scheduled to last until 31st December 2020, during which, it will continue to abide by EU laws, be subject to the rulings of EU courts, and contribute to the EU budget. This period is intended to provide enough time for final negotiations between the EU and UK to take place and determine the future. 

Even though some European-wide IP rights are entrenched within UK law as a result of treaties, rather than EU regulation or directives, resulting in a status quo following Brexit, there are areas where this is not the case. Such gap would need to be filled with equivalent UK IP rights to replace those that are currently recognised by the EU.

Trademarks & Designs: Brexit

Post Brexit, EU trademarks (“EUTM”) will no longer cover trademarks within the UK territory. IT seems however that a comparable UK trademark will be created for every registered EUTM, which UK trademark will be recorded on the UK trademark filing register and will be given the same legal status as if it had been registered under UK law an initio. 

Patents 

Patent law is not highly harmonised within the EU. Therefore following Brexit, with regards to the European Patent Convention (“EPC”), the UK will continue to be a participating state and entities will be able to continue to apply to the European Patent Office (“EPO”) for patent protection that will cover the UK. 

Copyright: Brexit

Since copyright is an unregistered domestic right in the UK, copyright will not be largely impacted by Brexit. The UK participates in various international copyright treaties, therefore the vast majority of UK and European copyrights will continue to apply.

Parallel Trading & Exhaustion of Rights: Brexit

In the withdrawal agreement, the EU and UK have agreed that IP rights exhausted in the EU and the UK before the end of the transition period shall remain exhausted in both areas. Post transition period, whilst the UK government has confirmed that, post-Brexit, it will continue to recognise the EEA regional exhaustion scheme, goods sold in the UK may no longer be considered exhausted after Brexit. In practice, this means that organisations exporting IP-protected goods from the UK to the EEA may need the rights-holders permission following Brexit.

Next Steps

In general, whether related to IP rights or any other contractual provision, it is very important that being located in a fully fledge EU member state, any Maltese business trading with the UK reviews their current contractual arrangements, to understand if Brexit is likely to lead to any issues, that require cessation, modification or alteration of that current agreement. 

Emphasis should be drawn to the determination of the scope of goods or services to be provided or received under those arrangements. 

Furthermore, organisations that are currently negotiating new agreements with UK counterparts should consider whether any provisions are to be included to cater for and provide protection in case of different possible Brexit scenarios. The above also relates to intellectual property provisions and consequences of such arrangements.

Even though there is almost a year for transitioning to take place, in the light of the above, Chetcuti Cauchi Advocates IP team has geared up to rise to the challenge. Our IP team has been advising local clients and UK residents in Malta on the changes, alterations or cancellations they need to make in order to streamline their IP strategy to cater for this event. 

Our Intellectual Property Practice

At Chetcuti Cauchi, we seek to apply a pragmatic business approach to each client’s intellectual property matters and obtain results consistent with the client’s business needs. As a Malta IP Law Firm Chetcuti Cauchi offers a wide-ranging variety of services for individuals and entities seeking to protect their ideas, marks, inventions, works and designs from potential threats.



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Dr Maria Chetcuti Cauchi

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Dr Silvana Zammit

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