28 February 2019 (Barcelona, Spain) — As I have noted before, MWC Barcelona is an event that has aspects of all the technology fields I cover: artificial intelligence, blockchain, cybersecurity, e-discovery, the entire mobile ecosystem, plus just about every facet of social media, content production and intellectual property rights. In the real world, technology knowledge is not separated into neatly defined boxes. Topics overlap and bleed into one another. All knowledge is interconnected. So it is no surprise that the contingent of intellectual property lawyers who attend MWC grows every year, many of whom I know from other events I attend. So maybe it should not be surprising that even here Brexit rears its ugly head considering it will impact parts of the mobile ecosystem.
A few weeks ago I noted to the subscribers on my IP listserv that the Law Society published guidance that highlights what changes a no-deal Brexit would bring to the IP law of the United Kingdom. This paper is part of a series that covers various areas of law, all of which can be accessed here. The Law Society is a terrific source for a wide range of subjects.
Clifford Mason, who does IP work for Nokia, noted that should the UK leave the EU on the 29th of March 2019 without having concluded an agreement with the EU, the Government through the effect of the European Union (EU) Withdrawal Act will convert current EU law that is directly applicable in the UK into domestic law. The Law Society guidance noted above discusses various aspects in detail, but for those in a rush here are a few highlights and key points:
- UK lawyers would lose their rights of representation before all EU courts and bodies, including the EU Intellectual Property Office and the Court of Justice of the European Union. Those who wish to continue to be representatives before EU courts or bodies should consider cross-qualification in an EU jurisdiction. The Law Society also provides general guidance on providing legal services in the EU here.
- A no deal Brexit might result in EU registrars revoking .eu domains owned by UK companies or individuals and renewals might no longer be possible. If you own a .eu domain, make sure your site is still available under other top-level domains as this might be an issue that can easily fall under the radar.
- As a result of the UK Government’s unilateral decision to align with the EU/European Economic Area’s (EEA) exhaustion regime from exit day, it is unclear whether IP rights on goods first put on sale in the UK would be also exhausted across the EU/EEA post-Brexit. In other words, should a product’s IP right be exhausted in the EEA the UK will also consider it exhausted; however, this may not necessarily be true for the reverse. Therefore, as the Law Society points out, in the future, parallel imports from the UK to the single market could be an infringement and blocked by holders of EU trade marks or national IP rights.
- Regarding EU trade marks and registered designs, the UK will provide equivalent rights for continued protection. However those with ongoing applications should note that the 9-month period post-exit will apply in the UK for equivalent protections as the EU – keeping inside the 9-month period ensures the date of the EU application will be retained for the UK equivalent. For unregistered Community designs the Government has stated that those rights will continue to be protected for the remainder of their term along with creating an equivalent UK right. This will be in addition to the current UK’s unregistered design right. This raises 2 issues: (1) overlapping UK unregistered design rights, and (2) the issue of whether a design post-Brexit being disclosed in the EEA will give unregistered design right equivalents in the UK and whether those disclosed in the UK would receive unregistered Community design right protection.
Other key points:
Other guidance provided and issues raised by the Law Society include:
– post-Brexit broadcasters in the UK will have to clear rights in all Member States where their signal reaches; whether the UK will be part of the Unitary Patent Court System is uncertain
– UK owners of database rights may no longer have database rights enforceable in the EEA
– applications to UK customs for EU Member States to take action on goods suspected to be infringing an IP Right might no longer be possible post-Brexit and would need to be filed in an EU MS – The European Commission has provided guidance in their notice found here.
While a no deal Brexit might be imminent, the guidance issued by the Law Society does provide some pointers so to ensure that the negative impact on IP protection is reduced.