Effect of on IP protection Contents

Introduction 1

Patents 2

Trade Marks 10

Designs 16

Supplementary Protection Certificates 22

Domain Names 24

Plant Variety Rights 24

Other Consequences 25 Introduction

Formal procedure for UK’s The Government has published a White Paper setting out its intention to convert all existing EU legislation departure from the EU into domestic UK law “wherever practical” in order to In a referendum on 23 June 2016, the British provide for continuity of the existing legal framework electorate voted for the UK to leave the EU. in the period immediately after withdrawal from the EU. It is then foreseen that the UK may, over Although the referendum was advisory rather than time, choose to amend or repeal areas of legislation legally binding, the British Parliament voted to originating in European law. However, it remains to be implement the result and on 29 March 2017 the UK seen how the implementation of EU law into domestic served the EU with a notice under Article 50 of the law will work in practice; additional amendments to Treaty on (TEU), formally beginning legislation are likely to be required in some cases. the withdrawal process. The proposed withdrawal agreement contains Article 50 TEU provides for the negotiation of an transitional provisions whereby most EU law will agreement which sets out the arrangements for continue to apply to the UK until the end of 2020, withdrawal. A two-year period is prescribed for meaning that no immediate changes will take place. concluding an agreement governing the withdrawal. It is possible that a separate agreement on the future This 2-year period was set to end on 29 March 2019 relationship may include provisions allowing the UK to but has now been extended to 31 January 2020. continue to participate in certain EU institutions after At the end of this extended period the EU treaties the end of the transition period. However, at this stage will cease to apply to the UK unless the deadline is it is too early to say whether such agreements will be further extended or a transitional period is agreed in reached, or in which areas. which the EU treaties would remain effective. As a consequence of the present political uncertainty it The following pages set out the current and also remains a possibility that the UK may leave the anticipated future rules relating to IP protection in EU before the 31 January deadline or that Article the UK and elsewhere, and how Brexit may impact on 50 may be revoked by the UK effectively ending the that protection. withdrawal process. Dehns and the EU Neverthless, as a consequence of the Article 50 For many decades Dehns has served its clients by procedure, the UK will remain a member of the EU - securing and defending their and subject to all EU legislation and agreement - until at least 31 January 2020, unless political events in internationally and in particular in Europe. This will continue even in the event of Brexit and our focus on the next few months lead to a revision of this deadline. assisting our clients to secure and uphold protection Legislation in effect in Europe will remain. Dehns is a European firm and, as part of our commitment to providing a pan- until UK exits the EU European service to our clients, we established an Until such time as Britain exits the EU, EU legislation office in the EU (in ) over 20 years ago. remains in effect and nochanges to existing IP Our UK and EU-based attorneys will continue to legislation are expected. As a consequence, no provide a full and comprehensive service to our alternative arrangements are necessary for seeking clients before and after Brexit. IP protection in the UK. However, thought should be given to changes that may occur and changes of Contact Dehns practice that might be beneficial inanticipation of the T: +44 (0)20 7632 7200 E: [email protected] UK’s exit. W: www.dehns.com

1 Patents: European Patents

2 The European Patent Convention (EPC) provides the Coverage under European patents may therefore be legal framework for European patent applications. obtained in one or more of the countries shown on This is an international treaty which is administered the map overleaf. by the (EPO). Both the EPC and the EPO are completely independent of the EU. On grant the European patent is converted into national rights in one or more EPC member states. All 28 EU countries are signatories to the EPC in The steps required to do so in any country are their own right, together with 10 non-EU countries governed by national law, not EU law, and will be such as , , and . unaffected by Brexit. UK membership of the EPC does not depend on membership of the EU and the UK will remain a There is no reason to expect any change to the EPC, member of the EPC even after the UK leaves the EU. the UK’s participation in that Convention, or EPO practice as a result of Brexit. The EPO also has agreements with other countries that are not party to the EPC. The EPO has European Brexit may affect the planned “”, patent extension agreements with a number of which will be administered by the EPO as an countries by which the patent may be extended to alternative to the existing system of obtaining those countries (currently Bosnia-Herzegovina and national rights. However, Brexit will not have ). Furthermore, validation agreements any effect on EPO procedures concerning have been signed with four non-member states, Unitary Patents. (, , and the Republic of ), allowing for a European patent to have effect in those countries.

3 Who can act as representative What can Dehns do for me? before the EPO? All our patent attorneys are qualified European Patent Attorneys and can continue to represent you All European Patent Attorneys can act as before the European Patent Office on any matter, representatives before the EPO. including filing and obtaining a European Patent, acting as your representative in Opposition or Appeal A European Patent Attorney must be a national proceedings and paying renewal fees. We can also of an EPC member state and have a place of attend to conversion of the patent into national business in, or be employed in, an EPC member rights in countries of interest. These abilities will be state. The UK is an EPC member state and will unaffected by Brexit. We will also be able to attend to remain so even after Brexit. European Patent requesting the grant of a Unitary Patent if and when Attorneys who are nationals of the UK and this system becomes available. employed in the UK will therefore continue to be able to act in all matters before the EPO.

Do I need to do anything now? No. No changes are anticipated.

You will still be able to obtain patent protection in the UK via the EPO route, just as you can at present. UK-based European Patent Attorneys will continue to be able to act in all proceedings before the EPO.

4 European Patent Convention Member States

Member states Extension states Validation states (Cambodia not shown)

5 UK Patents

There is no reason to expect any change to UK law Do I need to do anything now? or practice relating to UK national patents as a result of Brexit. The UK Intellectual Property Office (UK No. No changes are anticipated. IPO) will continue to handle applications for patent applications in the UK. What can Dehns do for me? All patent attorneys at Dehns are Registered UK Who can act as Patent Attorneys. A number of our patent attorneys representative in the UK? hold higher litigation qualifications. Dehns can therefore continue to represent you in all matters Registered UK Patent Attorneys may represent before the UK Patent Office and in patent litigation in clients before the UK IPO. the English courts.

Registered UK Patent Attorneys are also authorised to conduct patent litigation in the Intellectual Property Enterprise Court as well as in the High Court on appeal from decisions of the UK IPO. Patent attorneys with higher litigation qualifications may also conduct patent litigation in the Court of Appeal and the Supreme Court.

6 International Patent Applications

The Patent Cooperation Treaty (PCT) is an Who can act as representatives international treaty which provides the legal framework for International patent applications. in relation to International As this is an international treaty it is independent Patent Applications? of the UK’s membership of the EU. The treaty is administered by the World Intellectual Property Patent Attorneys are entitled to act as Organization (WIPO), which is a specialised agency representatives before the international offices of the United Nations (UN). The UK will continue to carrying out the various functions of the World be a signatory to the PCT and a member of the UN Intellectual Property Organization (WIPO) based on and WIPO. their rights to act before their national and regional patent offices. UK-based European Patent Attorneys The PCT allows for the filing of international are entitled to act as representatives in acts taken applications and their search and preliminary before WIPO, the UK IPO and the EPO. examination. On conclusion of the search and examination phase, national or regional applications Do I need to do anything now? must be derived from the international application and pursued in national or regional (e.g. EPO) No. No changes are anticipated. jurisdictions to obtain granted patents. What can Dehns do for me? Coverage under the PCT extends to 150 countries All our patent attorneys are qualified European and regions including the UK and the EPO. Patent Attorneys and registered UK Patent Attorneys and can continue to deal with all matters in relation There is no reason to expect any change to the PCT, to International patent applications. We can continue the UK’s participation in that Treaty, or the practice to attend to national and regional phase application before the various Offices carrying out services in filings via the PCT just as we do at present. This relation to International Patent Applications as a includes direct handling of UK, German or European result of Brexit. applications via the PCT, or instructing our associates in other countries of interest.

7 Unitary Patent and

A number of EU countries have recently agreed to As the UK is still an EU member until Brexit allow a single patent (“Unitary Patent”) to provide negotiations have been completed, it is possible that protection in multiple countries simultaneously. the UK could still approve the Agreement before If and when this becomes available, it will be as Brexit in order to allow the new system to enter an alternative to the current practice of obtaining into force. Legislation enabling the Government to separate national rights via the EPO or through do so has recently been passed, and the current national patent offices. Unitary Patents will understanding is that the Government intends to be granted by the EPO using the existing EPO ratify the Agreement prior to Brexit. If the Agreement application and examination procedure. Upon grant comes into force while the UK is still an EU member, there will be a choice (for participating countries) one possibility is that the UK will then cease to be a between separate national patent rights or a Unitary participant once Brexit takes effect. An alternative Patent instead. proposal involves amending the Agreement to allow the UK to continue to participate as a non-EU Litigation involving Unitary Patents will be carried member state, although at the moment it is unclear out in a new international court, the Unified Patent whether this is legally possible. Further uncertainty is Court (UPC). The UPC will also have jurisdiction over created by the fact that Germany is delaying its own national patent rights for the participating countries ratification of the Agreement pending the outcome of if those national rights were obtained via the EPO. a legal challenge in the German courts. This creates a However, during a transitional period of 7 or more further variable depending on whether the challenge years it will be possible to request an “opt-out” from is resolved before Brexit takes place, or afterwards. UPC jurisdiction for national rights. Each of these factors raises points of legal and/ The Unitary Patent and UPC are only open to EU or political uncertainty, and therefore a delay member states. They have not yet come into force, in implementation can be expected while the as this requires the “Agreement on a Unified Patent implications are explored. Court” (an international treaty) to be approved by at least 13 countries. A condition for the system to take At present a major division of the UPC, responsible effect is that these 13 countries must include the UK, for cases relating to chemistry and life sciences, is and Germany. This was previously expected destined to be located in London. It is unlikely that to happen by the end of 2016, with a “sunrise the UK will retain this division of the Court after period” for opt-outs starting in late 2016 and the new Brexit if the UK does not remain a participant in the system then becoming fully operational in the first system. Milan and are both rumoured to half of 2017. Brexit means that this timetable has be possible alternative locations. Relocation of the been delayed, potentially by at least two years, and it Court will require amendment of the Agreement, is currently uncertain whether the UK will be willing which is likely to lead to additional delays. or able to participate in the system after Brexit.

8 Some commentators have suggested that the project Do I need to do anything now? may collapse without UK participation. However, it has taken 40 years of on/off negotiations to reach this No. While some changes are expected to the stage and there is a great deal of political pressure timescale and possibly to the final shape of the in other EU countries to continue with the project. system, the Unitary Patent and UPC are not yet A number of countries, such as the and in force. The status quo is therefore unaffected. , took steps towards approving the Agreement in the days following the Brexit referendum and the Dehns will monitor developments and provide further total number of ratifications stands at 15 as of April updates if the system appears to be ready to proceed 2018. It therefore seems probable that the project in any form (with or without the UK). If the project will continue in a revised form. continues, the first procedural steps to consider will be the filing of opt-out requests for national rights obtained via the EPO. We will receive advance notice Who can act as representative of the “sunrise period” for such requests and will in Unitary Patent/UPC matters? provide updates if action is required. Once there is some clarity on whether and when the Unitary A Unitary Patent will be obtained via the EPO’s Patent/UPC can be expected to come into force, normal application and examination route, with a it may be appropriate to consider delaying grant of final decision on whether to opt for a Unitary Patent patents so that they may take advantage of those or national rights being deferred until the final stages systems. However, since this is some way off, such of grant. As this procedure will be administered by actions would be premature at this time. the EPO, European Patent Attorneys will be able to request the grant of a Unitary Patent. What can Dehns do for me? European Patent Attorneys will also be able to act in Whether or not the UK is ultimately a member of the all proceedings before the UPC, including conducting Unitary Patent and UPC systems, Dehns will continue litigation and filing requests for opt-outs in relation to to be able to represent you in relation to all matters national rights granted under the normal EPO system. such as requesting grant of a Unitary Patent, filing opt-out requests for national rights, and conducting The Unitary Patent and UPC legislation do not litigation before the UPC. at present impose any nationality or residency requirements on European Patent Attorneys other Regardless of whether or not the UK is ultimately than those required for qualification to act before the a member of the system, English will be the EPO. This means that current legislation allows UK- predominant language of the Court, and its Rules of based European Patent Attorneys to represent clients Procedure combine aspects of English Common Law in all Unitary Patent and UPC-related matters, even and European Civil Law. This means that our patent if the UK is not ultimately a member of the Unitary attorneys in our UK and German offices, who are Patent or UPC systems. dual-qualified British and European Patent Attorneys, will be well-equipped to act in UPC proceedings.

9 Trade Marks: UK Trade Marks

10 There is no anticipated change to UK practice as a result of Brexit. The UK Intellectual Property Office (UK IPO) will continue to handle applications for the registration of trade marks in the UK, and Registered UK Trade Mark Attorneys can continue to represent clients before the UK IPO as they do now.

Do I need to do anything now? No. No changes are anticipated.

What can Dehns do for me? Dehns can continue to represent you in all matters before the UK IPO in the usual manner.

11 European Union Trade Marks (EUTMs)

A European Trade Mark (EUTM) registration is Who is entitled to own a EUTM? obtained from the EUIPO (the European Union Intellectual Property Office, based in Alicante, Any natural or legal person, including authorities ), and is a unitary right which automatically established under public law, can be the proprietor covers all 28 Member States of the European Union. of a EUTM. There is no requirement that the owner of Once filed, a EUTM application is examined by the a EUTM be a national of, or domiciled in, a Member EUIPO to ensure that it satisfies certain official State of the EEA. requirements, and the EUIPO carries out a search for conflicting earlier EUTMs, the results of which Are my EUTMs still are sent to the Applicant for information purposes only. After a EUTM application has passed the protected in the UK? examination stage, it is published. If no opposition is Yes. Until the UK leaves the EU, there is no change filed during the publication period, or an opposition in terms of the protection afforded by a EUTM, and is filed but successfully overcome, the EUTM will these will continue to confer protection in all of the proceed to registration, thereby providing the owner EU Member States, including the UK. with trade mark protection throughout the EU for a period of ten years, renewable every 10 years. When Brexit occurs, whether or not a formal withdrawal agreement is in place between the As a member of the EU, the UK is automatically UK and EU, the UK Government has enacted covered by any EUTM applications or registrations. legislation to ensure that existing EUTMs which are fully registered will be automatically re-registered Who can act as a representative as, national UK Trade Mark registrations, thereby retaining their original filing or priority date. before the EUIPO? There will be no charge for the re-registration and Any natural person who is a national of an EEA protection for the remaining EU Member States will Member State, has his/her place of business or remain unaffected. employment in an EEA Member State, and is entitled to represent natural or legal persons before the EUTMs which are pending when Brexit occurs will national IP Office of an EEA Member State, may act not be automatically re-registered in the UK. Instead, as a representative before the EUIPO. There is no their owners will have a period of nine months in requirement that the representative satisfy each of which to re-apply for UK protection, retaining the these requirements in the same EEA Member State. EUTM filing (and, if applicable, priority) date. It is anticipated that usual filing costs will apply in this scenario. The date on which the nine-month period commences will depend on whether the UK and EU reach a withdrawal agreement. If there is no agreement in place, the period will commence on the day the UK leaves the EU.

12 Do I need to do anything now? How will I obtain protection No. As noted above, nothing has changed in terms for my trade marks in the of the protection conferred by any existing EUTM applications/registrations, and provisions are now in UK following Brexit? place to ensure that owners of existing EUTMs do not New EUTM applications that are filed after the UK lose any UK rights as a result of the UK’s exit from has left the EU will not extend to the UK (although the EU. under the terms of the proposed withdrawal agreement which is currently on the table it appears As regards new marks, unless there is an urgent need that the UK will remain a member of the EUTM to secure registered protection in the UK as quickly system for a transitional period lasting until the end as possible, there is no particular advantage to filing of 2020). Thus, should you wish to protect any new separate EU and UK applications at this time. trade marks in the UK and other EU Member States, it will be necessary to file a EUTM application and a It should be borne in mind that, following the UK’s separate UK application (or designate the UK under exit from the EU, use of a EUTM within the UK which an International Application/Registration). pre-dates the date of withdrawal will be deemed to constitute use of the EUTM (e.g. for the purpose of What can Dehns do for me? defending a non-use cancellation action). However, according to the EUIPO, the significance of that For now nothing changes, and our Trade Mark use will “progressively decrease – from potentially Attorneys can continue to act for you in connection sufficient to entirely irrelevant – depending upon the with all trade mark matters before the EUIPO. We are extent to which it covers the period for which use has also in the fortunate position that because we have to be established in the case at hand”. Consequently, an office in Germany, we shall still be able to satisfy if you own a EUTM that is currently only used in the the criteria for acting as representatives before the UK, you may want to think about extending that use EUIPO when the UK leaves the EU, and thus continue to additional EU Member States to ensure that your handling all of your EUTM matters. EUTM does not, in due course, become vulnerable to cancellation.

13 International Trade Marks

The Agreement Concerning the International Who can act as a representative Registration of Marks (“the Madrid Agreement), and the Protocol Relating to the Madrid Agreement (“the before WIPO? Madrid Protocol”), referred to jointly as “the Madrid The does not provide for any System”, provide for the international registration requirement as to professional qualification, of trade marks. The system is administered by the nationality, residence or domicile in order to World Intellectual Property Organization (WIPO). As be appointed as a representative before WIPO. this is an international treaty, it is independent of the Therefore, there is no official list of representatives UK’s membership of the EU. before WIPO. However, before you can file an International Application, you need to have already The Madrid System allows for the central filing of an registered, or have filed an application to register, the application for the international registration of a trade same mark in your “home” IP office. The International mark, designating any number of the 97 Contracting Application has to be submitted through this same Parties. Where an International Application complies IP Office, which then certifies the Application and with the applicable requirements, the mark is forwards it to WIPO. Your WIPO representative must recorded in the International Register and published therefore be able to file applications in the territory of in the WIPO Gazette of International Marks. WIPO your “home” IP office. then notifies each Contracting Party in which protection has been requested. Each designation is then examined by the relevant national Intellectual Are my International Property Office according to local law/practice and, Registrations still if successful, protection is granted in that territory. protected in the UK? Both the UK and EU are Contracting Parties to the Yes. If you own existing International Registrations Madrid Protocol. that are protected as EUTMs, nothing will change until such time as the UK leaves the EU, and your There is no reason to expect any change to the International Registration will continue to be Madrid System, the UK’s participation in that system, protected in all EU Member States, including the UK. or the practice before the various Offices carrying out services in relation to International Trade Mark The provisions outlined above in the context Registrations as a result of Brexit. of EUTMs will also apply to EU designations of International Registrations. Following Brexit, EU designations of International Registrations which are fully registered will be automatically re-registered as, national UK Trade Mark registrations (not UK designations), retaining their original filing or priority date. Again, there will be no charge and protection for the remaining EU Member States will remain unaffected.

14 EU designations of International Registrations How will I obtain protection which are pending when Brexit occurs will not be automatically re-registered in the UK. Their owners for my trade marks in the will have a period of nine months in which to re-apply UK under an International for UK protection, retaining the EU designation filing Registration following Brexit? (and, if applicable, priority) date. New International Applications designating the EU that are filed after the UK has left the EU will not If none of your International Registrations are extend to the UK. Thus, if protection is required protected as EUTMs, then you do not need to do in the UK, a separate UK designation under the anything, as they will not be affected by the UK’s exit International Application will be required if you do not from the EU. In particular, it is important to note that already have a UK application or registration. In many International Registrations that specifically designate cases, UK clients will already have a UK application the UK will be unaffected by the UK leaving the EU. or registration of the relevant mark, as this will be needed to serve as the “home” application/ registration upon which the International Application Do I need to do anything now? will be based. No. As noted above, nothing has changed in terms of the protection conferred by any existing EUTMs What can Dehns do for me? obtained via the Madrid System of International Registration, and provisions are now in place to All of our Trade Mark Attorneys are qualified UK and ensure that UK owners of existing EUTMs (including EU Trade Mark Attorneys and can file and prosecute those obtained under the Madrid System) do not lose International Applications based on either UK or EUTM applications/registrations, and represent any rights as a result of the UK’s exit from the EU. clients before the UKIPO, EUIPO and WIPO in connection with such matters, instructing attorneys However, for the reasons outlined above in in designated territories in the event of local the context of EUTMs, if you currently own an representation being required. International Registration that is protected in the EU but not protected separately in the UK, and you view When the UK leaves the EU, we shall be able the UK as an important market, you might wish to to continue filing and prosecuting International consider requesting a subsequent designation in the Applications based on UK applications/registrations UK under your International Registration, or filing a and designating any of the 103 Contracting Parties, separate UK application for the relevant mark(s) now. and continue representing clients before the UKIPO and WIPO in connection therewith, in the usual Similarly, should you be considering filing a new manner. Since we have an office in Germany and will International Application in the near future, and thus continue to satisfy the requirements for acting as representatives before the EUIPO, we shall also be are looking for protection in the UK and other able to continue handling International Applications/ EU Member States, there may be some merit in Registrations based on EUTMs on behalf of our designating the EU and UK separately under the clients, and the prosecution of EU designations International Application. before the EUIPO where necessary.

15 Designs: UK Registered Designs (UKRD)

16 There is no reason to expect any change to UK practice as a result of Brexit. The UK Intellectual Property Office (UK IPO) will continue to handle applications for the registration of designs in the UK, and our attorneys can continue to represent clients before the UK IPO as they do now.

Do I need to do anything now? No. No changes are anticipated.

What can Dehns do for me? Dehns can continue to represent you in all matters before the UK IPO in the usual manner.

17 European Registered (RCD)

A European Registered Community Design (RCD) Who is entitled to own a RCD? is a unitary right that automatically covers all 28 Member States of the European Union. It is obtained Any natural or legal person from any country can from the EUIPO (the European Union Intellectual be the proprietor of a RCD. Therefore Brexit will not Property Office, based in Alicante, Spain), and affect your ability to be able to obtain a Registered provides a simple and highly cost-effective route for Community Design. obtaining pan-European registered designs. A single application is filed and the resultant registration can Are my RCDs still be enforced across the European Union in a single infringement action. Once registered, the RCD will protected in the UK? provide the owner with design protection throughout Yes. Until the UK leaves the EU, there is no change the EU for a period of five years from the filing date, in terms of the protection afforded by a RCD, and renewable for five year periods up to a total possible these will continue to confer protection in all of the term of 25 years. As a member of the EU, the UK EU Member States, including the UK. Following is automatically covered by any RCD applications Brexit, registered RCDs will be automatically cloned or registrations. free of charge, to provide a corresponding right in the UK. The cloned UK registration will need to be Who can act as a representative renewed separately from the existing RCD. RCDs which are pending when Brexit occurs will not be before the EUIPO? automatically re-registered in the UK. Instead, their Any natural person who is a national of an EEA owners will have a period of nine months in which to Member State, has his/her place of business or re-apply for UK protection, retaining the RCD filing employment in an EEA Member State, and is entitled (and, if applicable, priority) date. It is anticipated to represent natural or legal persons before the that usual filing costs will apply in this scenario. The national IP Office of an EEA Member State, may act date on which the nine-month period commences as a representative before the EUIPO. There is no will depend on whether the UK and EU reach a requirement that the representative satisfies each of withdrawal agreement. If there is no agreement in these requirements in the same EEA Member State. place, the period will commence on the day the UK leaves the EU. If there is an agreement in place, there will be a transitional period.

18 Do I need to do anything now? How will I obtain protection You may wish to consider filing RCDs as early as for my designs in the possible and before Brexit, to try to ensure that they are registered by the date of Brexit (in case there UK following Brexit? is no deal, and hence no transitional period). If the Any new RCD applications that are filed after the RCD is registered before Brexit then this would UK has left the EU will not extend to the UK. Thus, result in a corresponding UK registration being should you wish to protect any new design in the automatically cloned at the date of Brexit, reducing UK and other EU Member States, it will then be procedural complications, and avoiding payment necessary to file a RCD application and a separate of an official fee. Similarly, if there are outstanding UK application. formal requirements in respect of any pending RCDs, it is worth trying to address these as soon as In respect of substantive matters, currently UK possible so that the RCD can be registered before Registered Design law and EU Registered Community Brexit. If you need to provide a certified copy of a Design law are equivalent. Therefore, following priority document, it would be advisable to do this Brexit, equivalent protection to the current RCD at the earliest opportunity. If you have requested should be attainable by filing a RCD application and deferred publication of any RCD, you may wish to a UKRD application in parallel. However, one notable consider whether deferment is still necessary. If not, difference is that a UKRD application cannot claim you should consider paying the publication fee as priority to a Utility Model, whereas an RCD can. soon as possible. Paying the publication fee as soon as possible will allow the registration to proceed to What can Dehns do for me? publication without delay. Although the situation is unclear, it is likely that deferred publication cases For now nothing changes, but even if it does our will be treated in the same way as pending RCDs. attorneys can continue to act for you in connection Paying the publication fee as soon as possible with all Design matters before the EUIPO. Since before Brexit occurs will maximise the chances of we have an office in Germany, even if the UK is not publication occurring before Brexit, resulting in part of the EEA following Brexit, we will still satisfy automatic cloning of a corresponding UK registration. the criteria for acting as representatives before the EUIPO. Dehns will therefore be able to continue handling all RCD matters even when the UK leaves the EU.

19 International Designs

Who is entitled to apply Are my International for an International Registrations still Design application? protected in the UK? The Hague Agreement constitutes three different Yes. If you own existing International Registrations Acts: the London Act 1934, the Hague Act 1960, that are protected as European Registered and the Act 1999. To be able to apply for Community Designs (RCDs), nothing will change an International Design the Applicant needs to be until the UK leaves the EU, and your International a resident or citizen of a state that is within the Registration will continue to be protected in all EU jurisdiction of one of the Acts of the Hague Agreement. Member States, including the UK.

The EU is a contracting party to the Geneva Act. Thus, Following Brexit, granted EU designations of currently any resident or citizen of any EU member International Registrations will automatically be can apply for an International Design. cloned free of charge to provide corresponding UK Design Registrations, in a similar manner to From 13 June 2018 the UK has been a contracting party to the Geneva Act. Therefore, UK residents or registered RCDs that were filed directly at the EUIPO. citizens will still be able to apply for International The cloned UK registration will need to be renewed Designs following Brexit. separately from the existing RCD. Protection for the remaining EU Member States will remain unaffected. The right to apply for an International Design application of applicants from other states that Any EU designations of International Registrations are a contracting party of one of the Acts of the pending when Brexit occurs will not be automatically Hague Agreement, such as the US or , will be re-registered in the UK. Instead, their owners will unaffected by Brexit. have a period of nine months in which to re-apply for UK protection, retaining the RCD filing (and, if applicable, priority) date. It is anticipated that Who can act as a representative usual filing costs will apply in this scenario. The for an International date on which the nine-month period commences will depend on whether the UK and EU reach a Design application? withdrawal agreement. If there is no agreement in The Hague System does not impose any restrictions place, the period will commence on the day the UK on the professional qualification, nationality or leaves the EU. If an agreement is in place, there will domicile of the representative filing an International be a transitional period. Design application. Therefore, even once the UK leaves the EU, in respect of International Designs, we If none of your International Design Registrations will still be able to represent clients who are a resident are protected as RCDs, then you do not need to do or citizen of a state that is within the jurisdiction of one anything, as they will not be affected by the UK’s exit of the Acts of the Hague Agreement. from the EU.

20 Do I need to do anything now? How will I obtain protection As noted above, nothing has changed in terms of the for my designs in the UK protection conferred by any existing International Design applications/registrations, and the under an International government has enacted legislation to ensure that Registration following Brexit? owners of existing International Design registrations Following the UK's accession to the Geneva Act, designating the European Community do not lose UK applicants are able to file International Design any rights as a result of the UK’s exit from the EU, Applications designating the EU and/or the UK, whether or not a withdrawal agreement is reached. as desired. Similarly, residents or citizens of a jurisdiction that is a member of the Geneva Act If you have requested deferred publication of any are able to use an International Design Application RCDs obtained via an International Registration to obtain protection in the UK, provided that , you may wish to consider whether deferment is the International Design Application includes a still necessary. If not, you should consider paying UK designation. the publication fee as soon as possible. Paying the publication fee as soon as possible will allow the registration to proceed to publication without delay. What can Dehns do for me? Although the situation is unclear, it is likely that Our attorneys can continue to act for you in deferred publication cases will be treated in the same connection with International Design matters before way as pending RCDs. Paying the publication fee as WIPO even when the UK leaves the EU. soon as possible before Brexit occurs will maximise the chances of publication occurring before Brexit, resulting in automatic cloning of a corresponding UK registration.

21 Unregistered Supplementary Design Rights Protection Certificates

In the UK there are two forms of unregistered Design Supplementary Protection Certificates (SPCs) Rights. These are the UK Design Right (UKDR) and provide additional protection to patentees for European Unregistered Community Designs (UCD). pharmaceutical, veterinary and plant protection These are rights that, in certain circumstances, exist products which require regulatory approval automatically and give the proprietor the right to (marketing authorisation) prior to being placed on prevent third parties copying their design. the market. The term of patents covering these products may be extended by a period of up to five These two rights have slightly different scope, for years. For medicinal products in respect of which example their extent of protection and duration paediatric studies are carried out, an additional six differ. Also, the persons that qualify for each of these months may be obtained. rights can differ. SPCs are applied for at national patent offices and UCDs arising prior to the date of Brexit will give granted locally in each European country. For any rise to an equivalent right in the UK, whether or not country which is a member of the EU the legal basis a Withdrawal Agreement is reached. The UK will for SPCs is provided by two EU regulations. Once implement new legislation mirroring the UCD system the UK leaves the EU, SPC protection will no longer to provide a right equivalent to UCD following Brexit. be available in the UK under these regulations. However, measures are in place to ensure that SPCs will continue to exist in the UK after EU exit, even in the event of no deal between the EU and the UK government by exit day.

If the UK leaves the EU with a deal, the proposed withdrawal agreement will come into effect. This requires the UK to honour any applications for SPCs still pending, or SPC applications which are filed, up to the end of the transition period (i.e. up to the end of 2020).

22 In the event of no deal, the UK would leave the EU Marketing authorisations without a withdrawal agreement and without any transitional provisions in place. However, in this SPCs are granted based on a marketing authorisation scenario the UK Parliament will implement legislation for the product in the country in which protection relating to UK patents to fix issues which will occur is sought. as a result of the UK’s departure from the EU, including law relating to SPCs to ensure the SPC Currently there are three routes for obtaining a system continues to operate effectively. The planned marketing authorisation in the UK for a medicinal legislation relating to SPCs will bring the current EU product: (i) via the "centralised procedure" in Regulations relating to the grant of SPCs into UK law which a single authorisation is obtained by one subject to replacing any references to EU legislation application to the European Medicines Agency (EMA) and legal bodies with UK equivalents. – this is valid in all EU, EEA and EFTA countries; (ii) via the "decentralised procedure" in which SPCs granted by exit day (or before the end of any national authorisations are obtained in each EU transition period) will not be affected by the UK’s member state; and (iii) via the "mutual recognition departure from the EU. They are national rights and procedure" in which a medicine is authorised in one will continue to exist as such after EU exit. EU member state and a later application is made for this authorisation to be recognised in other For SPC applications which are pending at, or filed member states. after, the UK’s departure from the EU: Following the UK’s exit from the EU, a marketing • If a deal is agreed with the EU, the current EU approval under the “centralised procedure” will no Regulation will continue to apply during the longer extend to the UK. A marketing authorisation transition period for the UK will need to be obtained from the UK’s own national regulatory agency, the Medicines and • If there is no deal, SPC applications will be dealt Healthcare products Regulatory Agency. with under the equivalent UK domestic law.

Any SPC application pending in the UK at the time of EU exit, or filed after the UK has left the EU, will therefore not be adversely affected.

23 Domain Names Plant Variety Rights

For now, nothing changes, and no immediate action Plant Variety Protection for plant breeders is will be taken against .eu domain names that have available at both national and regional levels. been registered by residents of the UK. When the UK UK Plant Variety rights may be sought directly at leaves the EU, UK residents will no longer be entitled the Plant Variety Rights Office (PVRO) in the UK. to own .eu domain names. Thereafter, for a certain, Regional protection may also be sought under the as yet undisclosed, period of time, EURid (the registry European Union Plant Variety Right administered by manager of .eu domain names) will allow UK-based the Community Plant Variety Office (CPOV). This is an owners of .eu domain names to transfer those names agency of the European Union and provides a single to qualifying EU-based entities. If ownership is not Plant Variety Right (a Community Plant Variety Right, transferred, the domain names will be revoked. CPRV) covering all 28 member nations of the EU. Whilst applications for CPRVs may be sought by plant According to the current eligibility criteria for .eu breeders from outside the EU, they must be filed names, a potential registrant must be either: through an agent domiciled in a territory of the EU.

• an undertaking having its registered office, central At present it is not possible to hold both a CPRV and administration or principal place of business a national right in a country covered by the CPRV. within the European Union, Norway, Iceland or As a consequence, until Brexit occurs plant variety , or protection must be sought through either national • an organisation established within the European rights or a CPRV. Union, Norway, Iceland or Liechtenstein without prejudice to the application of national law, or When the UK exits the EU, new applications for CPRVs will no longer cover the UK. Protection in the • a natural person resident within the European UK would then need to be obtained through UK Plant Union, Norway, Iceland or Liechtenstein. Variety rights which may still be sought directly at the PVRO in the UK. It is anticipated that rights in the UK Following Brexit, many large corporations will still deriving from existing CPRVs will be maintained, for be able to meet these criteria by reason of having example by conversion to a national right. subsidiaries in other EU territories. However, individuals and smaller businesses may face more of Dehns has offices in the UK and an office in Europe a challenge. and will therefore be able to obtain Plant Variety Rights in the UK and the EU on your behalf before Ultimately, it will be for the and after the UK’s exit from the EU. to decide how, EURid is to handle the issue of the ownership of .eu domains by UK registrants following the UK’s exit from the EU, but further guidance is unlikely to forthcoming for some time.

24 Other consequences of Brexit from an IP perspective

Pan-European Injunctions It is possible that, following Brexit, any existing pan-European injunctions based on EUTM or RCD rights would cease to apply in the UK, in which case a EUTM or RCD owner would either need to bring proceedings before the UK courts seeking a fresh injunction in order to prevent a UK infringement that was previously prohibited by the pan-European injunction, or seek an extension of the pan-European injunction to cover the UK.

Following Brexit, any EUTM or RCD owner wishing to apply for an injunction in respect of an infringement occurring in one or more EU Member States and in the UK would need to bring two separate sets of proceedings – one before a designated EUTM or Community Design court and one before the UK courts.

Contracts, Agreements, Undertakings etc. Clients who are party to, or the beneficiaries of, co-existence agreements, licences, undertakings, consents or other contracts should carefully review these and identify, in particular, anywhere the relevant territory is defined by reference simply to “the European Union”. Whilst it is likely that the intention of the parties at the time of signature will, in the majority of cases, be determinative in construing the territorial scope of such an Agreement following Brexit, this will not necessarily be the case, as other factors may come into play. In cases where the issue of the territorial scope of an Agreement may be in doubt post-Brexit, clients should seek legal advice. In some cases it may be appropriate and advisable to have clarificatory side letters executed by the parties as soon as possible. London Oxford Brighton St Bride’s House Theresienstraße 6-8 Willow Court Aspect House 10 Salisbury Square 80333 Munich West Way 84-87 Queens Road London EC4Y 8JD Germany Oxford OX2 0JB Brighton BN1 3XE United Kingdom United Kingdom T: +44 (0)20 7632 7200 T: +49 89 2422 8130 T: +44 (0)1865 305100 T: +44 (0)1273 244200 F: +44 (0)20 7353 8895 F: +49 89 2422 8140 F: +44 (0)20 7353 8895 F: +44 (0)20 7353 8895 E: [email protected] E: [email protected] E: [email protected] E: [email protected]

Manchester Bristol Sandwich Fabric Building 10 Victoria Street Discovery Park 30 Queen Street Bristol Ramsgate Road Manchester M2 5HX BS1 6BN Sandwich CT13 9FF United Kingdom United Kingdom United Kingdom T: +44 (0)161 470 8030 T: +44 (0)1273 244200 T: +44 (0)20 7632 7200 F: +44 (0)20 7353 8895 F: +44 (0)20 7353 8895 F: +44 (0)20 7353 8895 E: [email protected] E: [email protected] E: [email protected]

The information in this document is necessarily of a general nature and is given by way of guidance only; specific legal advice should be sought on any particular matter. While this document has been prepared carefully to ensure that all information is correct at the time of publication, Dehns accepts no responsibility for any damage or loss suffered as a result of any inadvertent inaccuracy. Information contained herein should not, in whole or part, be published, reproduced or referred to without prior approval. Any such reproduction should be credited to Dehns. © Dehns 2019 www.dehns.com