Legal protection for intellectual property is likely to be impacted by Brexit. Gerard Kelly (pictured) in Mason Hayes & Curran explores the likely ramifications

Intellectual property (IP) is an important asset for any business. Following the vote for Brexit in the UK, matters such as how IP rights will be protected in a post-Brexit Europe are still being debated. IP owners will have concerns about the impact of Brexit on the scope and enforcement of their IP rights.

The precise impact is not yet clear at this stage but some illumination on the likely impact can be sourced from information and guidance received to date from the European Commission, which is set out under the various IP rights below.

Registered Trademarks And Designs

Trademarks and designs are an important consumer-facing asset. Based on the European Commission's recent notice, it is proposed that trademarks and designs registered in the UK will remain unaffected. EU trademarks and registered community designs, which also currently apply in the UK, will continue to be valid from 30 March 2018 in the 27 remaining member states but will no longer have effect in the UK.

Similarly, existing international registrations designated in the EU will continue to be valid in the 27 remaining member states but will no longer have effect in the UK. This leaves an obvious gap in trademark and design portfolios, where EU-wide rights were relied upon for coverage in the UK market.

No assurances or confirmations have yet been agreed regarding the potential conversion of EU trademarks and community designs to national UK trademarks and designs, but this is expected in due course. While this is also expected to be potentially automatic and without cost, rights holders should be aware that active steps may need to be taken in order to retain protection in the UK going forward.

In Association with

Unregistered Trademarks And Designs

The law of passing off, which protects unregistered trademarks such as brands – and on occasion, product get-up – is a national right in the UK and will remain unaffected. However, for businesses who rely on the protection afforded by the community unregistered design, this will cease to apply in the UK.

This will have an effect on industries where short protection periods for designs were useful without the active management of a registration portfolio, such as the fashion industry. Increased reliance will have to be placed on the domestic unregistered design right where possible in the UK, but differences between the two exist.

Copyright

A further commission notice relating to copyright was issued more recently. From 30 March 2019, copyright and related rights in the UK will be governed, in addition to domestic law, by a number of international copyright treaties.

The influence of EU harmonisation on copyright will dissipate over time. Furthermore, the EU standalone database right, which protects the investment in databases, is based in EU legislation and will no longer be available to UK nationals habitually resident in the UK after 30 March 2019.

Patents

As the UK is a party to the Patent Co-operation Treaty and the European Patent Convention, neither of which rely on EU membership for effect, procedures for obtaining a UK patent will not change dramatically. On the other hand, the coming into effect of the unitary patent and the Unified Patent Court (UPC) looks likely to be significantly delayed. The UK is a compulsory member in order for the UPC to take effect and Brexit provides some doubt about the UK's continued participation in the unified system.

What Next?

While certain guidance has been provided by the European Commission with regard to the impact of Brexit on IP, significant ground remains to be covered. In particular, further clarification will be welcomed regarding the potential conversion of EU rights to UK national rights, to allow rights holders to consider all available options with regard to retaining protection across the UK. In the meantime, businesses need to be aware of and adapt to the effects Brexit will have on IP portfolios.

Gerard Kelly is Head of Intellectual Property with Mason Hayes & Curran