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Threats for IP rights holders

Do you know what new threats for IP right holders such as trade marks and design rights are emerging? What should you be considering?  

Businesses from a range of sectors are impacted by the emerging threats to intellectual property ownership. Perhaps the biggest impact will be for businesses trading on a brands, retail sectors, food industry, fashion, designers and technology.

Trade Marks

Following completion of Brexit negotiations, the UK will no longer be an EU member state. Consequently, the unitary European Union trade mark (EUTM) will no longer cover the UK. That means that the Unitary European Union Trade Mark will no longer provide any protection to intellectual property rights in the UK.

Threat for trade marks

You should consider reviewing trade mark portfolios to identify any brands which only have EU protection and no separate UK protection.

The safest approach is to file new applications for EUTMs and a separate application for the UK trade marks.

It is possible that through a bilateral agreement between the UK and the EU that the Unitary European Union Trade Mark  will continue to have effect in the UK post Brexit.

A good outcome

A good outcome  would be that the Unitary European Union Trade Mark will automatically mirror as UK trade marks. Another good result would be that intellectual property rights owner opting-in to apply for recognition of their existing EUTMs as UK trade marks. But, the problem is, nothing can be guaranteed at this stage.

For many businesses, the risk of vulnerability will outweigh the cost of registering a UK trade mark.

Design rights

Similar issues arise in relation to Registered Community Designs (RCDs). New and existing RCDs will no longer have protection in the UK following Brexit.

Threat for Registered Community Designs

The threat to the ownership and exploitation of a Registered Community Design is that a design cannot be registered unless it is ‘new’ at the time of its UK application. A design right is no longer considered new once registered for a year or more. A year is not a very long period of time in the real world.

Solution for new design right registrations

There is not much that can be done for existing registered community designs unless under Brexit there is a deal. But, for “new” Registered Community Designs you should consider supplementing applications for Registered Community Designs with separate UK applications for registered designs. The benefit is that the business will be able to obtain the same geographical coverage for both the UK and separately for the EU for their design.

Copyright is likely to be the least affected area of intellectual property law because it is a territorial right meaning that copyright ownership originating in the country of creation. Enforcement can be worldwide. There is no registration regime in the UK or throughout the EU.

New developments in copyright law

There are new copyright reforms afoot at present in the EU. Brexit would mean that the UK is no longer bound to implement future EU directives or follow decisions of the Court of Justice of the European Union. In a nutshell we are likely to see difference in the outcome of cases heard in the UK Supreme Court and the Court of Justice of the European Union.

Adverse implications for copyright ownership

Over time, we are likely to see increased divergence with EU rules, rather than the harmonisation. This is bad for businesses, in particular in the creative sector, because they would then be forced to comply with two separate sets of rules to conduct business in UK.

Patents

The impact of Brexit on substantive patent law is likely to be less significant because the current regime has been established largely as a matter of national law and international treaty, rather than EU legal order.

The one specific area that is likely to be affected is the proposed Unitary Patent and Unified Patent Court.
If the UK Government decides not to ratify the Unified Patent Court Agreement in light of the Brexit decision, can the system proceed without the UK? In the short to medium term, there is likely to be some delay.

Licensing agreements

You will benefit from reviewing licences and other agreements revolving around the use of intellectual property. The vulnerability created by Brexit in turn creates risk. The risk is rights fall out of protection and into the hands of competitors.

Potential threat

Some of the changes you need may be quite straight forward in legal terms but bring strengthened commercial standing. For example, in instances where the territorial scope of a licence references the EU, this needs to be assessed to see if it covers the UK post Brexit.

Additionally, it is likely you will need to cater for EUTMs/RCDs and any new UK trade marks or UK registered designs you hold going forward.

Notifying the UK Intellectual Property Office

Do not forget that you will need to notify the UK Intellectual Property Office of amendments you make to trade marks and registered designs.

Intellectual Property (Unjustified Threats)

It is already possible for you to claim against unjustified threats you may receive. The claim would be made to court for a declaration that the threat lacked justification.  A claim arises over all forms of intellectual property ownership – i.e. patents, trade marks, design rights and community marks.

New development to the law relating to unjustified threats to intellectual property

There are proposals under the Intellectual Property (Unjustified Threats) Bill which is going through the UK parliament to bolster protection from unjustified threats.  The idea is that the current threats provisions which are scattered across various places are consolidated into one act or parliament.  It will be a defence to show that reasonable steps had been taken to find the person who carried out the infringement to intellectual property.  The steps taken will have to be disclosed.

We are here to help you through the period we are now in of vulnerability and threat to the ownership and exploitation of intellectual property rights.

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