The UK IPO discussed with representatives from the IP rights in UK about the changes that will affect intellectual property after the Brexit. According to the UK IPO the three most important topics to discuss are
- The question of the recognition of patents, trade mark and design attorneys and lawyers before EU courts and tribunals;
- The impact on EU and UK unregistered design rights; and
- The impact on UK and EU registered trade mark and design rights.
At this meeting the representatives were assisting UK IPO to identify difficulties the Brexit could bring. Furthermore a theoretical search for possible solutions to these problems did start.
Rights of representation
The first session was mainly about rights of representation before of the EUIPO and the CJEU. The current positions of the represented professions (Trademark Attorneys, Solicitors and Barristers) and the issues of privilege for each profession was discussed as well as the need to preserve this privilege.
Furthermore they talked about options how UK professionals can continue to represent clients on trademark matters in the EU.
The first possibility would be no change in the representation for UK professionals, the second possibility would be grandfathering for those qualified to act before the EUIPO and CJEU another one could be a bilateral agreement whereby other EU nationals can act in the UK in return for UK professionals being able to do so in the EU. The advantages and disadvantages of every possible solution were discussed. If the UK profession should lose its rights of representation before the EUIPO and CJEU, the UK IPO would suffer under lower revenue. The potential loss could not be calculated until now.
Finally there was a clear commitment to ensure that mechanisms will be proposed by the UK Government to protect the existence, priority and seniority of existing unregistered and registered rights within both the UK and EU after the fulfilled Brexit.
Both unregistered Community Design right (“UCD”) and UK unregistered design right (“UKDR”) have a quite different ambit and length of protection. Nevertheless the participants want to maintain both.
Despite this intention some problems do occur. The first is the inability of UKDR to protect surface decoration, secondly there happens to be an unsolved problem in UK case law at the interface between UKDR and copyright. Brexit could possibly solve these conflicts as well as the problem of overlapping protection that can apply to a single design.
Another issue in relation to UCD was whether first publication of a design has to occur within the EU or not. The German court decision Gebäckpresse II suggests that it does. This would mean that both UK designers and international designers who currently launch new collections in the UK would no longer obtain UCD protection for those designs post Brexit.
In relation to enforcement, a clear issue is whether EU injunctions can be awarded and what their effect will be in the EU and in the UK. A possible solution could be changes to UKDR or the creation of a hybrid right by improving the existing UKDR provisions or adoption the CDR provisions with some amendments, such as extending the term.
Registered Rights: UKTMs, EUTMs, RCDs and UKRDs
During the last session there was only time to discuss registered trademarks but not registered designs. Similar problems can nevertheless be easily transferred to design issues as well.
The meeting focused on possible ways in which the UK government could either negotiate a bilateral agreement with the EU under which the UK would remain part of the EU trade mark system after Brexit, which already was seen as a radical solution. The alternative would be to enact national legislation which would enable EU trade mark owners to continue owning effective rights in the UK post-Brexit.
This meetings focus laid on the equivalent UK protection for EUTMs (and, by extension, RCDs). There are six different options to reach this goal. One was allowing EU trade marks to be enforced in the UK automatically, through to a procedure for converting or transforming EU trade marks into an equivalent UK trade mark with the same commencement and priority dates, with the converted mark undergoing a full examination procedure. Concerns toward these possibilities regarded costs, no loss of protections, translation issues, seniority and some more.
While no firm conclusions were reached at any of the three meetings, they achieved a growing consensus on the key issues and will assist DEXEU in identifying preferred options to put forward for discussion and negotiation. Further meetings are planned to explore issues and solutions in more detail.
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Sources: lexology.com | pixabay.com