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Effect of Brexit on IP protection Contents

Introduction 1

Patents 2

Trade Marks 10

Designs 16

Supplementary Protection Certificates 23

Domain Names 24

Plant Variety Rights 24

Other Consequences 25 Introduction

Formal procedure for UK’s in the period immediately after withdrawal from the EU. It is then foreseen that the UK may, over departure from the EU time, choose to amend or repeal areas of legislation In a referendum on 23 June 2016, the British originating in European law. However, it remains electorate voted for the UK to leave the EU. to be seen how the implementation of EU law into domestic law will work in practice; additional Although the referendum was advisory rather than amendments to legislation are likely to be required in legally binding, the British Parliament voted to some cases. implement the result and on 29 March 2017 the UK served the EU with a notice under Article 50 of the The proposed withdrawal agreement contains Treaty on (TEU), formally beginning transitional provisions whereby most EU law will the withdrawal process. continue to apply to the UK until the end of 2020, meaning that no immediate changes will take place. Article 50 TEU provides for the negotiation of an It is possible that a separate agreement on the future agreement which sets out the arrangements for relationship may include provisions allowing the UK withdrawal. A two-year period is prescribed for to continue to participate in certain EU institutions concluding an agreement governing the withdrawal. after the end of the transition period. However, at this This period may be extended by unanimous stage it is too early to say whether such agreements agreement among the EU member states. At the end will be reached, or in which areas. of this period the EU treaties will cease to apply to the UK. The following pages set out the current and anticipated future rules relating to IP protection in As a consequence of the Article 50 procedure, the the UK and elsewhere, and how Brexit may impact on UK will remain a member of the EU – and subject that protection. to all EU legislation and agreements – until at least 29 March 2019, and possibly later if an extension is Dehns and the EU agreed. For many decades Dehns has served its clients by securing and defending their Legislation in effect internationally and in particular in Europe. This will until UK exits the EU continue even in the event of Brexit and our focus on assisting our clients to secure and uphold protection Until such time as Britain exits the EU, EU legislation in Europe will remain. Dehns is a European firm remains in effect and no changes to existing IP and, as part of our commitment to providing a pan- legislation are expected. As a consequence, no European service to our clients, we established an alternative arrangements are necessary for seeking office in the EU (in ) over 20 years ago. Our IP protection in the UK. However, thought should UK and EU-based attorneys will continue to provide a be given to changes that may occur and changes of full and comprehensive service to our clients before practice that might be beneficial in anticipation of and after Brexit. the UK’s exit.

The Government has published a White Paper setting Contact Dehns out its intention to convert all existing EU legislation T: +44 (0)20 7632 7200 E: [email protected] into domestic UK law “wherever practical” in order to W: www.dehns.com provide for continuity of the existing legal framework

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 European Patent Office (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 any ). Furthermore, validation agreements effect on EPO procedures concerning Unitary have been signed with four non-member states, 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. A system, the Unitary Patent and UPC are not yet in number of countries, such as the and 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, it normal application and examination route, with a 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 be able to represent you in relation to all matters to national rights granted under the normal EPO such as requesting grant of a Unitary Patent, filing system. opt-out requests for national rights, and conducting litigation before the UPC. The Unitary Patent and UPC legislation do not at present impose any nationality or residency Regardless of whether or not the UK is ultimately requirements on European Patent Attorneys other a member of the system, English will be the than those required for qualification to act before the predominant language of the Court, and its Rules of EPO. This means that current legislation allows UK- Procedure combine aspects of English Common Law based European Patent Attorneys to represent clients and European Civil Law. This means that our patent in all Unitary Patent and UPC-related matters, even attorneys in our UK and German offices, who are if the UK is not ultimately a member of the Unitary dual-qualified British and European Patent Attorneys, Patent or UPC systems. 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 can act as a representative obtained from the EUIPO (the European Union Intellectual Property Office, based in Alicante, before the EUIPO? ), and is a unitary right which automatically Any natural person who is a national of an EEA covers all 28 Member States of the European Union. Member State, has his/her place of business or Once filed, a EUTM application is examined by the employment in an EEA Member State, and is entitled EUIPO to ensure that it satisfies certain official to represent natural or legal persons before the requirements, and the EUIPO carries out a search national IP Office of an EEA Member State, may act for conflicting earlier EUTMs, the results of which as a representative before the EUIPO. There is no are sent to the Applicant for information purposes requirement that the representative satisfy each of only. After a EUTM application has passed the these requirements in the same EEA Member State. examination stage, it is published. If no opposition is filed during the publication period, or an opposition is filed but successfully overcome, the EUTM will Who is entitled to own a EUTM? proceed to registration, thereby providing the owner Any natural or legal person, including authorities with trade mark protection throughout the EU for a established under public law, can be the proprietor period of ten years, renewable every 10 years. of a EUTM. There is no requirement that the owner of a EUTM be a national of, or domiciled in, a Member As a member of the EU, the UK is automatically State of the EEA. covered by any EUTM applications or registrations. Are my EUTMs still protected in the UK? Yes. Until the UK leaves the EU, there is no change in terms of the protection afforded by a EUTM, and these will continue to confer protection in all of the EU Member States, including the UK. When Brexit occurs, it is expected that transitional provisions will be enacted whereby existing EUTMs can be converted (possibly automatically) into, or re- registered as, national UK Trade Mark registrations, thereby retaining their original filing or priority date. Protection for the remaining EU Member States will remain unaffected.

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 it is anticipated that UK following Brexit? transitional provisions will be brought in to ensure New EUTM applications that are filed after the UK that owners of existing EUTMs do not lose any UK has left the EU will not extend to the UK (although rights as a result of the UK’s exit from the EU. under the terms of the proposed withdrawal agreement it appears that the UK will remain a However, because of uncertainty surrounding member of the EUTM system for a transitional period the detail of the above-mentioned transitional lasting until the end of 2020). Thus, should you wish provisions, in terms of the costs, procedures and to protect any new trade marks in the UK and other timescales involved, as well as increasing uncertainty EU Member States, it will be necessary to file a surrounding the issue of the extent to which use of EUTM application and a separate UK application (or a trade mark in one EU Member State is sufficient designate the UK under an International Application/ to maintain a valid EUTM registration, if the UK Registration). is an important market for you, and you own EU registrations of trade marks that are not already What can Dehns do for me? protected separately in the UK, you might wish to consider putting in place separate protection for For now nothing changes, and our Trade Mark those trade marks now. This may be particularly Attorneys can continue to act for you in connection advisable if you believe that an existing EUTM with all trade mark matters before the EUIPO. We are registration might be potentially vulnerable to also in the fortunate position that because we have cancellation as a result of its geographically limited an office in Germany, we shall still be able to satisfy use within the EU to date. the criteria for acting as representatives before the EUIPO when the UK leaves the EU, and thus continue Similarly, for the reasons outlined above, should handling all of your EUTM matters. you be considering seeking protection for any new marks in the UK and the other EU Member States in the near future, there may be some merit in filing a EUTM application and a separate UK application (or designating the UK under an International Application/Registration).

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 of requirement as to professional qualification, trade marks. The system is administered by the World nationality, residence or domicile in order to Intellectual Property Organization (WIPO). As this is be appointed as a representative before WIPO. an international treaty, it is independent of the UK’s Therefore, there is no official list of representatives 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, if Registrations still 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 There is no reason to expect any change to the your International Registration will continue to Madrid System, the UK’s participation in that system, be protected in all EU Member States, including or the practice before the various Offices carrying the UK. As noted above in the context of EUTMs, out services in relation to International Trade Mark it is expected that transitional provisions will be Registrations as a result of Brexit. enacted whereby, following Brexit, EU designations of International Registrations can be converted into, or re-registered as, national UK Trade Mark registrations, retaining their original filing or priority date. Again, protection for the remaining

14 EU Member States will remain unaffected. If none How will I obtain protection of your International Registrations are protected as EUTMs, then you do not need to do anything, as they for my trade marks in the will not be affected by the UK’s exit from the EU. In UK under an International particular, it is important to note that International Registration following Brexit? Registrations that specifically designate the UK will New International Applications designating the EU be unaffected by the UK leaving the EU. that are filed after the UK has left the EU will not extend to the UK. Thus, if protection is required Do I need to do anything now? in the UK, a separate UK designation under the International Application will be required if you do not No. As noted above, nothing has changed in terms already have a UK application or registration. In many of the protection conferred by any existing EUTMs cases, UK clients will already have a UK application obtained via the Madrid System of International or registration of the relevant mark, as this will Registration, and it is anticipated that transitional be needed to serve as the “home” application/ provisions will be brought in to ensure that UK owners registration upon which the International Application of existing EUTMs (including those obtained under will be based. the Madrid System) do not lose any rights as a result of the UK’s exit from the EU. What can Dehns do for me?

However, for the reasons outlined above in All of our Trade Mark Attorneys are qualified UK and the context of EUTMs, if you currently own an EU Trade Mark Attorneys and can file and prosecute International Registration that is protected in the EU International Applications based on either UK or EUTM applications/registrations, and represent but not protected separately in the UK, and you view clients before the UKIPO, EUIPO and WIPO in the UK as an important market, you might wish to connection with such matters, instructing attorneys consider requesting a subsequent designation in the in designated territories in the event of local UK under your International Registration, or filing a representation being required. separate UK application for the relevant mark(s) now. When the UK leaves the EU, we shall be able Similarly, should you be considering filing a new to continue filing and prosecuting International International Application in the near future, and Applications based on UK applications/registrations are looking for protection in the UK and other and designating any of the 97 Contracting Parties, EU Member States, there may be some merit in and continue representing clients before the UKIPO designating the EU and UK separately under the and WIPO in connection therewith, in the usual International Application. manner. Since we have an office in Germany and will thus continue to satisfy the requirements for acting as representatives before the EUIPO, we shall also be able to continue handling International Applications/ Registrations based on EUTMs on behalf of our clients, and the prosecution of EU designations 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) Are my RCDs still is a unitary right that automatically covers all 28 Member States of the European Union. It is obtained protected in the UK? from the EUIPO (the European Union Intellectual Yes. Until the UK leaves the EU, there is no change in Property Office, based in Alicante, Spain), and terms of the protection afforded by a RCD, and these provides a simple and highly cost-effective route for will continue to confer protection in all of the EU obtaining pan-European registered designs. A single Member States, including the UK. application is filed and the resultant registration can be enforced across the European Union in a single Following Brexit, the default position would be that infringement action. Once registered, the RCD will RCDs would cease to apply in the UK. However provide the owner with design protection throughout it is expected that transitional provisions will be the EU for a period of five years from the filing date, enacted whereby, following the UK’s exit from the renewable for five year periods up to a total possible EU, any existing RCDs can be converted (possibly term of 25 years. automatically) into, or re-registered as, national UK Registered Designs, thereby retaining their original As a member of the EU, the UK is automatically filing or priority date. covered by any RCD applications or registrations. Do I need to do anything now? Who can act as a representative No. As noted above, nothing has changed yet in before the EUIPO? terms of the protection conferred by any existing Any natural person who is a national of an EEA RCD applications/registrations, and it is anticipated Member State, has his/her place of business or that transitional provisions will be brought in to employment in an EEA Member State, and is entitled ensure that UK owners of existing RCDs do not lose to represent natural or legal persons before the any rights as a result of the UK’s exit from the EU. national IP Office of an EEA Member State, may act as a representative before the EUIPO. There is no However, because of uncertainty surrounding the requirement that the representative satisfies each of detail of the above-mentioned transitional provisions, these requirements in the same EEA Member State. in terms of the scope, costs, procedures and timescales involved, Registered Community Design owners who view the UK as an important market Who is entitled to own a RCD? and have publically disclosed their design less Any natural or legal person from any country can than one year ago, may wish to consider a cautious be the proprietor of a RCD. Therefore Brexit will not approach and file a separate UK application now for affect your ability to be able to obtain a Registered the relevant design(s) in order to provide absolute Community Design. certainty about the protection of the design in the UK after Brexit.

18 Similarly, should you be considering seeking protection for any new designs in the UK and the other EU Member States in the near future, there may be some merit in filing a RCD application and a separate UK application.

How will I obtain protection for my designs in the UK following Brexit? It is expected that new RCD Applications that are filed after the UK has left the EU will not extend to the UK (although under the terms of the proposed withdrawal agreement it appears that the UK will remain a member of the RCD system for a transitional period lasting until the end of 2020). Thus, should you wish to protect any new design in the UK and other EU Member States, it is likely to be necessary to file a RCD application and a separate UK application.

In respect of substantive matters, currently UK Registered Design law and EU Registered Community Design law are equivalent. Therefore, following Brexit equivalent protection to the current RCD should be attainable by filing a RCD application and a UKRD application in parallel.

What can Dehns do for me? For now nothing changes, and our attorneys can continue to act for you in connection with all Design matters before the EUIPO. Since we have an office in Germany, even if the UK is not part of the EEA following Brexit, we will still be able to satisfy 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

The Hague Agreement Concerning the International Who can act as a representative Deposit of Industrial Designs (“the Hague Agreement”) provides for the international registration of designs. for an International The system is administered by the World Intellectual Design application? Property Organization (WIPO). The Hague System does not impose any restrictions on the professional qualification, nationality or domicile The Hague Agreement is a system permitting of the representative filing an International Design a single design application to be filed covering application. Therefore, even once the UK leaves the multiple jurisdictions. EU, in respect of International Designs, we will still be able to represent clients who are a resident or citizen of a state that is within the jurisdiction of one of the Who is entitled to apply Acts of the Hague Agreement. for an International Design application? Are my International The Hague Agreement constitutes three different Registrations still Acts: the London Act 1934, the Hague Act 1960, protected in the UK? and the Act 1999. To be able to apply for Yes. If you own existing International Registrations an International Design the Applicant needs to be that are protected as European Registered a resident or citizen of a state that is within the Community Designs (RCDs), nothing will change jurisdiction of one of the Acts of the Hague Agreement. until the UK leaves the EU, and your International Registration will continue to be protected in all EU The EU is a contracting party to the Geneva Act. Member States, including the UK. Thus, currently any resident or citizen of any EU member can apply for an International Design. Once the UK leaves the EU, it is expected that, similarly to normal RCDs, transitional provisions will From 13 June 2018 the UK will also be a contracting be enacted whereby EU designations of International party to the Geneva Act. Therefore, UK residents or Registrations can be converted into, or re-registered citizens will still be able to apply for International as, national UK Design Registrations, thereby retaining their original filing or priority date. Designs following Brexit.

Protection for the remaining EU Member States will The right to apply for an International Design remain unaffected. application of applicants from other states that are a contracting party of one of the Acts of the If none of your International Design Registrations Hague Agreement, such as the US or , will be are protected as RCDs, then you do not need to do unaffected by Brexit. anything, as they will not be affected by the UK’s exit from the EU.

20 Do I need to do anything now? How will I obtain protection No. As noted above, nothing has changed in for my designs in the UK terms of the protection conferred by any existing International Design applications/registrations, under an International and it is anticipated that transitional provisions Registration following Brexit? will be brought in to ensure that owners of existing Following the UK's accession to the Geneva Act, International Design registrations designating the UK applicants will be able to file International European Community do not lose any rights as a Design Applications designating the EU and/or the result of the UK’s exit from the EU. UK, as desired. Similarly, residents or citizens of a jurisdiction that is a member of the Geneva Act will However, because of uncertainty surrounding detail be able to use an International Design Application of the above-mentioned transitional provisions, in to obtain protection in the UK, provided that the terms of the scope, costs, procedures and timescales International Design Application includes a UK involved, proprietors who currently own an designation. International Registration that is protected in the EU, who view the UK as an important market and have publically disclosed their design less than one year What can Dehns do for me? ago, might wish to consider a cautious approach and Our attorneys can continue to act for you in file a separate UK application now for the relevant connection with International Design matters before design(s). As noted above, this would provide WIPO even when the UK leaves the EU. absolute certainty about the protection of the design in the UK after Brexit.

For the reasons outlined above, should you be considering filing a new International Application in the near future, and are looking for protection in the UK and other EU Member States, there may also be some merit in filing a parallel UK Design Registration.

21 Unregistered Design Rights

In the UK there are two forms of unregistered Design Do I need to do anything now? Rights. These are the UK Design Right (UKDR) and European Unregistered Community Designs (UCD). Until the UK leaves the EU, the protection afforded These are rights that, in certain circumstances, exist by UKDR and UCDs will remain unaffected. However, automatically and give the proprietor the right to given the current significant uncertainty in how these prevent third parties copying their design. unregistered rights will be affected when Brexit happens, it may be worth considering in respect These two rights have slightly different scope, for of important designs that have not been publically example their extent of protection and duration differ. disclosed for more than one year, whether it would Also, the persons that qualify for each of these rights be beneficial to apply now for a registered design in can differ. Europe and/or the UK.

Under the proposed terms of the Withdrawal What can Dehns do for me? Agreement, UCDs arising prior to the end of the transition period (i.e. prior to the end of 2020) will If you currently rely on unregistered design rights give rise to an equivalent right in the UK for at least and believe that registered design rights may now be the remaining duration of the UCD. This will require more appropriate in view of the uncertainty, Dehns the UK to implement new legislation mirroring the can advise further. If you decide to file Registered UCD system and it is not yet known how or when this Community Designs and/or UK Registered Designs, legislation will be made. It is also not currently known Dehns can handle these applications for you. whether there will be any changes to the UK law on unregistered Design Rights in view of the UK’s exit, for We also have an office in Germany which will allow us example to change who qualifies for this right. to deal with all European Community Design matters when the UK leaves the EU.

22 Supplementary Protection Certificates

Supplementary Protection Certificates (SPCs) up to the end of 2020). New legislation will also be provide additional protection to patentees for required for future SPCs once the UK has left the EU. pharmaceutical, veterinary and plant protection We will continue to monitor the situation closely and products which require regulatory approval provide updates as necessary. (marketing authorisation) prior to being placed on the market. The term of patents covering these products Marketing authorisations may be extended by a period of up to five years. For medicinal products in respect of which paediatric SPCs are granted based on a marketing studies are carried out, an additional six months may authorisation for the product in the country in which be obtained. protection is sought.

SPCs are applied for at national patent offices and Currently there are three routes for obtaining a granted locally in each European country. For any marketing authorisation in the UK for a medicinal country which is a member of the EU the legal basis product: (i) via the "centralised procedure" in which for SPCs is provided by two EU regulations. Once the a single authorisation is obtained by one application UK leaves the EU, SPC protection will no longer be to the European Medicines Agency (EMA) – this available in the UK under these regulations. is valid in all EU, EEA and EFTA countries; (ii) via the "decentralised procedure" in which national A number of non-EU countries, such as Switzerland, authorisations are obtained in each EU member state; allow SPCs under their national law or have adhered and (iii) via the "mutual recognition procedure" in to the EU SPC regime through their membership which a medicine is authorised in one EU member of the EEA, e.g. Norway. Given the commercial state and a later application is made for this importance of SPCs it is expected that SPC authorisation to be recognised in other member states. protection will continue to be provided in the UK even once the UK has left the EU, although it is not yet Following the UK’s exit from the EU, a marketing clear what form this will take. This could be similar to approval under the “centralised procedure” would the current EU system or it could be modified. This no longer extend to the UK. It is possible that the UK could provide for clearer SPC legislation in the UK, could, like Norway, remain part of this system if it but what is difficult to predict at this stage is whether becomes part of the EEA. Alternatively, marketing this will be more or less favourable to patentees than authorisations for the UK only would need to be existing EU law governing the grant of SPCs. obtained from the UK’s own national regulatory agency, the Medicines and Healthcare products To enable existing UK SPCs (granted or pending) to Regulatory Agency. continue, transitional legislation will be required in the UK. The proposed withdrawal agreement requires the UK to honour any applications for SPCs still pending up to the end of the transition period (i.e.

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. At this stage, it UK Plant Variety rights may be sought directly at is unclear whether UK registrants will still be eligible to the Plant Variety Rights Office (PVRO) in the UK. register or hold .eu domains once the UK has left the Regional protection may also be sought under the EU. According to the current eligibility criteria for .eu European Union Plant Variety Right administered by names, a potential registrant must be either: the Community Plant Variety Office (CPOV). This is an agency of the European Union and provides a single • an undertaking having its registered office, central Plant Variety Right (a Community Plant Variety Right, administration or principal place of business CPRV) covering all 28 member nations of the EU. within the European Union, Norway, Iceland or Whilst applications for CPRVs may be sought by plant , or breeders from outside the EU, they must be filed • an organisation established within the European through an agent domiciled in a territory of the EU. Union, Norway, Iceland or Liechtenstein without prejudice to the application of national law, or At present it is not possible to hold both a CPRV and a national right in a country covered by the CPRV. • a natural person resident within the European As a consequence, until Brexit occurs plant variety Union, Norway, Iceland or Liechtenstein. protection must be sought through either national rights or a CPRV. In principle, EURid (the registry manager of .eu domain names) may revoke a domain name at its When the UK exits the EU, new applications for own discretion in case the registrant does not, or no CPRVs will no longer cover the UK. Protection in the longer, fulfils the above eligibility criteria. Following UK would then need to be obtained through UK Plant Brexit, many large corporations will still be able to Variety rights which may still be sought directly at the meet these criteria by reason of having subsidiaries PVRO in the UK. It is anticipated that rights in the UK in other EU territories. However, individuals and deriving from existing CPRVs will be maintained, for smaller businesses may face more of a challenge. example by conversion to a national right. Ultimately, it will be for the European Commission Dehns has offices in the UK and an office in Europe to decide how, EURid is to handle the issue of the and will therefore be able to obtain Plant Variety ownership of .eu domains by UK registrants following Rights in the UK and the EU on your behalf before the UK’s exit from the EU, but further guidance is and after the UK’s exit from the EU. 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 Munich Oxford Brighton St Bride’s House Theresienstr. 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 (0)89 2422 8130 T: +44 (0)1865 305100 T: +44 (0)1273 244200 F: +44 (0)20 7353 8895 F: +49 (0)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 Sandwich Peter House Discovery Park Oxford Street Ramsgate Road Manchester M1 5AN Sandwich CT13 9ND United Kingdom United Kingdom T: +44 (0)161 209 3434 T: +44 (0)1273 244200 F: +44 (0)20 7353 8895 F: +44 (0)20 7353 8895 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 April 2018 www.dehns.com