A No Deal Brexit and Its Impact on Intellectual Property Rights

Dechert LLP
Contact

Dechert LLP

In light of a possible no deal Brexit, businesses need to consider the impact such a scenario would have on their intellectual property rights, in particular trade marks, designs, patents and copyrights. For the majority of these rights protected under EU law, existing on a pan-EU basis, an equivalent UK right will be granted. Some rights, however, may require businesses to consider reviewing current agreements or to refile registration applications to ensure that existing rights will continue to have the same protection once the UK has left the EU.

Trade Marks and Community Designs

The draft agreement on the withdrawal of the UK from the EU sets out the position reached at a negotiator’s level between the UK government and the negotiators of the EU. The enforceability of this agreement is subject to a Brexit deal being reached and consequently any guidance taken from this agreement should be treated with caution. However, IP owners are likely to take some comfort from its content and the further guidance published by the UK government.

The UK government will almost certainly put in place measures to ensure that any registered trade marks, registered Community designs and unregistered Community designs will continue to be protected when the UK leaves the EU. Further, although the registration procedure for these protections is yet to be agreed, the government has stated that these protections will be granted at no cost and with minimal administrative burden on the right-holders.

Registered Trade Marks

The UK government will provide an equivalent UK registered trade mark in respect of all existing EU trade marks registrations (“EUTM”) at the date of the end of the transition period, December 31, 2020. This comparable UK right will be automatically granted with the same filing and priority rights and without re-examination of the EUTM. Any right-holders will be notified when the equivalent UK rights have been granted to them. The government has also stated that this system will work on an opt-out basis and therefore right-holders will have the opportunity to opt out of receiving the new comparable UK registered trade mark.

EUTM applications which are ongoing at the end of the transition period, on eventual registration, will only be registered in the remaining 27 member states. To avoid any loss of rights for these brand owners, applicants will have a right to file a corresponding application to the UK Intellectual Property Office in the nine-month period from the end of the transition period. During these nine months, any applications will retain the EU application date. Any businesses with trade marks caught up in lengthy opposition proceedings will need to consider an additional filing in the UK.

The draft agreement also states that “the trade mark shall not be liable to revocation on the ground that the corresponding European Union trade mark had not been put to genuine use in the territory of the United Kingdom before the end of the transition period.” Right-holders will therefore have an additional grace period in which to commence use of the trade mark in the UK before the new UK registration becomes at risk of being cancelled for non-use. It is not yet clear how long this grace period will be. Alternatively, a brand owner could consider re-filing the trade mark registration. Further, the UK equivalent trade mark shall benefit from the reputation acquired by the EUTM.

Community Designs

The same protections will be granted for Community designs in the UK, by use of an equivalent process to that used for registered trade marks.

Further, all unregistered Community designs which are in existence at the end of the transition period, will continue to be protected and enforceable in the UK for at least the remaining period of protection for each of these rights. Also within this period, they will continue to be protected in the EU. The UK government has also stated that it will create a new UK unregistered design right which will mirror the existing EU right. Consequently, any designs disclosed after the UK leaves the EU will automatically be protected under the current terms of the unregistered Community design. This leaves to one side the thorny issue of in which territory did first use arise. The new UK equivalent right will be known as the supplementary unregistered design right and the protection of these rights will be automatically granted.

The UK government has stated that it will also continue to work with the World Intellectual Property Office to ensure that in the UK there is a continued protection of trade marks and Community designs, which designate the EU, and are filed through the Madrid and Hague systems. This includes practical solutions for pending applications.

Implications for Brand Owners

Whilst it is possible the UK might find itself exiting the EU without a deal in place, it is likely, although not definite, that even in this scenario the government will stay true to its current guidance and create these comparable UK rights. Further, it is likely that these conversions will be made at no cost to the brand owner. Many right-holders have previously taken the decision to re-register their EU rights in the UK, however, given the UK government’s recent announcement, this may no longer be the best commercial action going forward. From early 2019 onwards, as a matter of good practice, brand owners should consider re-filing, especially where applicants are facing opposition in respect of pending applications, to ensure that these rights are protected once the UK leaves the EU.

Litigation

The UK government is yet to provide guidance on the status of any ongoing legal disputes in respect of EU registered trade marks or registered or unregistered Community designs at the end of the transition period and the UK government will provide more guidance on this at a point before the UK leaves the EU. Pending further guidance, it is possible that as these rights will continue to be protected in substantially the same way as they are currently, these disputes will continue to be heard by the court before which the case was brought and any judgments handed down will continue to be enforceable in much the same way.

Copyright

The position in relation to copyright laws in the UK will remain largely unchanged. This is in part owing to the UK being a party to the main international treaties on copyright and related rights. As such Treaties underpin the UK’s copyright legislation and membership of these treaties is not affected by the UK’s membership of the EU, leaving the EU will not have a significant impact on the UK’s position on copyright laws. The main international treaties include the Berne Convention, the Universal Copyright Convention, the Rome Convention and the WIPO Copyright Treaty, and these treaties provide copyright protection for works originating in or made by nationals of other treaty members. For example, the Berne Convention states that works originating in one contracting state must be given the same protection in each of the other contracting states that those states would give to their own nationals.

Further, under the EU Withdrawal Act 2018 (the “Withdrawal Act”), any EU legislation, including the cross-border mechanisms (as set out below), will be implemented in UK law. However, the reciprocal element of these mechanisms will cease to apply to the UK which means that although EU member states will likely to continue to be able to benefit from these provisions from the UK (providing the UK government chooses to grant these protections to the EU, as expected), UK businesses will not be able to benefit from these provisions from the EU, unless the EU passes new legislation to grant such permissions. Consequently, businesses should consider whether new agreements, such as additional permissions in respect of broadcasting arrangements, need to be negotiated.

Sui generis database rights. Upon leaving the EU, there will no longer be an obligation on EEA states to provide sui generis database rights (a national right that is comparable to but distinct from copyright and sits alongside copyright as an IP right protecting databases) to UK businesses. Further, UK owners of UK database rights may find their rights to be unenforceable in the EEA. UK businesses should consider relying on other forms of protection for their databases, such as restrictive licensing agreements, and any such existing agreements should be reviewed.

Country-of-origin principle for copyright clearance in satellite broadcasting. Broadcasters who rely on the country-of-origin principle, which simplifies the clearance of rights for cross-border satellite broadcasting, will need to consider whether they need to seek approval to continue broadcasting from each of the member states in which they currently broadcast. They should also consider whether they need additional copyright permissions; such additional permissions should be negotiated in advance of the UK leaving the EU.

Orphan works. UK cultural heritage institutions who continue to make orphan works available online once the UK leaves the EU may be infringing copyright laws. These institutions should consider whether they need to remove their works from their website or whether to limit access to content on a geographical location basis in the EEA.

Collective management of copyright. Upon leaving the EU the UK Collective Management Organisations will not be able to mandate EEA Collective Management Organisations to provide multi-territorial licensing of their online rights in their musical works. Consequently, businesses who rely on this may wish to seek to continue their existing arrangements by entering into new contractual agreements with the EEA Collective Management Organisations.

Cross-border transfer of accessible format copies of copyright works. Under this mechanism (the Marrakesh Treaty), the UK is currently able to transfer accessible format copies of copyright works between other EU member states and countries who have ratified the treaty. However, the UK does not intend to ratify the Marrakesh Treaty until after March 29, 2019. Consequently, until such time as the UK ratifies the Marrakesh Treaty the UK will not be able to rely on this mechanism. Businesses should therefore consider whether they need to seek the permission of the relevant right holder.

Patents

Supplementary Protection Certificate

A supplementary protection certificate (“SPC”) provides for an additional period of protection after a patent has expired in respect of patented pharmaceutical products and agrochemicals. SPCs are granted on a national level although the legal framework underpinning SPCs applies across the EU. On leaving the EU, the UK will implement EU law under the Withdrawal Act, including the SPC system. Consequently, SPCs together with the UK’s existing supporting provisions will form the UK’s own SPC regime on exit and the regime will continue to work as it currently does. No action will be required from businesses in respect of SPCs and any pending applications will continue to be assessed on the same basis and new applications can continue to be filed.

Unified Patent Court

The UK is part of an international agreement attempting to set up a Unified Patent Court (“UPC”), which will have jurisdiction over European patent disputes and will be able to issue remedies that are binding across almost the entire EU. The launch of the UPC has been significantly delayed, but on April 26, 2018 the UK government ratified the UPC Agreement, which now only needs to be ratified by the German government – see our previous update.

The impact of Brexit on the UPC partly depends on what stage of implementation it has reached, at the point of UK’s exit. If the UPC has been launched, the UK will need to consider whether it is possible to remain within the UPC system. Should the UK be required to withdraw from this system, UK patent owners will not be able to use the UPC or unified patent to protect their interests and instead will have to protect their interests in other ways, such as bringing a claim before the UK courts. Any UK businesses with existing unified patents at the date of exit, will be granted an equivalent UK protection. No action will be required from them to receive this right. If the UK remains part of the UPC, this will certainly give rise to a conflict with the UK government’s desire to make UK law supreme – see our previous update. Whilst not all EU member states are members of the UPC system, currently all members of the UPC system are EU member states. To make the UPC work with a non-EU member state may require significant changes to the UPC system, such as a change to the relationship between the UPC, EU law and the CJEU.

If the UPC does not come into force before the UK leaves the EU, there will be no changes to UK law at that time. However, the long term future of the UPC and the UK’s involvement in it, is certainly something that is, as yet, uncertain.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Dechert LLP | Attorney Advertising

Written by:

Dechert LLP
Contact
more
less

Dechert LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide

JD Supra Privacy Policy

Updated: May 25, 2018:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at www.jdsupra.com) (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at privacy@jdsupra.com.

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at privacy@jdsupra.com or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at privacy@jdsupra.com or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to privacy@jdsupra.com. We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to privacy@jdsupra.com.

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at: privacy@jdsupra.com.

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at www.jdsupra.com) (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit legal.hubspot.com/privacy-policy.
  • New Relic - For more information on New Relic cookies, please visit www.newrelic.com/privacy.
  • Google Analytics - For more information on Google Analytics cookies, visit www.google.com/policies. To opt-out of being tracked by Google Analytics across all websites visit http://tools.google.com/dlpage/gaoptout. This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit http://www.aboutcookies.org which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at: privacy@jdsupra.com.

- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.