How will leaving the EU affect IP rights, essentially?
Patents will not be affected because the European Patent Convention is a system based on geographical Europe, not the EU.
Trade marks and designs will be affected, however. This is because EU trade marks and designs will no longer cover the UK. Hence, whereas before Brexit, a single EU trade mark or design application covers all 28 member states, after Brexit, to cover the same 28 territories, two applications will be needed - one that covers the EU-of-27 and the other one that covers the UK.
What are the major concerns that IP owners now face as we prepare to enter Brexit negotiations?
Firstly, how to avoid a loss of rights. As EU trade marks and designs will no longer cover the UK, action will be needed to maintain rights in the UK.
Current EU trade mark legislation contains provisions that possibly could be adapted to make this possible, but there is nothing equivalent in current EU design legislation.
Secondly, extra costs going forward. As it will be necessary after Brexit, to file separate UK and EU applications in order to cover the same 28 territories that currently can be coverered with a single EU application, inevitably, there will be extra costs.
Similar knock on costs will apply down the road when it comes to renewing registrations, recording assignments, recording licences, opposing the applications of others, and so on.
How will it affect IP owners looking to expand internationally?
For IP Owners looking to expand internationally, Brexit will add a detour to the route, but it shouldn’t change the final destination.
IP owners with strong interests throughout Europe may try to simplify the route as much as possible for themselves by looking to appoint IP representatives who can act as regional counsel throughout Europe, and not merely in their home markets.
What can new brands do to safeguard themselves in this time of uncertainty?
For new trade marks and designs, we are recommending filing separate, simultaneous applications at the EU and UK Intellectual Property Offices.
Although this doubles up on protection in the UK for now, it means brand and design owners will not have to worry about dividing or converting trade marks and designs later, and it should help them to get certainty in the rights they have at an earlier stage, and hence help them to invest in brand and product development with confidence.
What steps should established brands now be taking/preparing to take?
For established brands (and products), the position is slightly different. Some companies have already re-filed their entire EU trade mark portfolios at the UK Intellectual Property Office.
This gives them security as far as coverage in the UK is concerned, but technically loses some historical rights in the sense that their new UK trade marks run from essentially now, whereas their EU rights run from earlier dates.
Despite this, it is certainly worth considering.
For designs, this is not possible (other than for designs filed within the last 6 months). This is because designs have novelty requirements, and UK designs filed now, based on existing EU designs will lack novelty (because they are anticipated by those earlier EU designs).
Hence, design owners have a special need to make sure Brexit negotiators do not overlook them.
It is also strongly advisable for established brand and product owners to review existing agreements, licences and other documents that concern their IP and make sure they are future proof against Brexit.
For example, there are many co-existence agreements in force between trade mark owners that concern “EU trade marks” and are effective “in the EU”. What will be the position of these agreements after Brexit when the EU trade marks concerned no longer cover the UK, and the UK is no longer in the EU?
What is the preferred outcome of the Brexit negotiations for IP owners generally speaking?
Every kind of Brexit will result in the UK being outside of the EU trade mark and design systems, unless the UK remains in the European Economic Area and the EU trade mark and design systems are expanded so that they no longer cover just the EU, but the EEA.
This is theoretically possible, but not something that is officially on the table, and not likely to happen in time for Brexit.
In view of the above, the best outcome for IP owners is that the authorities and Brexit negotiators are aware of the IP issues and make appropriate provisions for them.
This is essential for design owners. As I say above, trade mark owners can, to an extent, take control of the situation themselves.
How consequential/inconsequential will ‘soft’ or ‘hard’ Brexit be to IP owners, big or small – is there a happy solution and how likely do you think it is it will be reached under a Tory/DUP ‘coalition’?
Sorry to be boring here, but, to be honest, I don’t think it will make much difference to brand and product owners whether we have a hard Brexit or a soft Brexit. As I say above, both kinds, and anything in between, will result in the UK being outside of the EU trade mark and design systems.
(The difference for trade mark and design attorneys is that, if the UK remains in the EEA, UK attorneys will be entitled to represent their clients before the EU IPO in trade mark matters – although, for technical reasons, not currently in design matters. For this reason, UK based attorneys definitely would prefer a soft Brexit).