WF_Brexit

Intellectual Property & Data Protection – Top 5 Issues (23 Dec 2020)

  1. Divergence of intellectual property systems - At present, a registered trade mark - EUTM (formerly a CTM), design - RCD, or a Geographic Indication can be protected with a single application in all EU Member States.  However, under the Withdrawal Agreement Act 2002 (the “Withdrawal Agreement”) from 1 January 2021, an EUTM registration will no longer protect its owners’ rights in the UK.   Rather on 1 January 2021, The UK Intellectual Property Office (UKIPO) will automatically convert all existing EUTMs into "cloned" UK trade marks without any loss of priority, filing or seniority dates at no cost to the owner.  Applicants with a pending EUTM application will be able to apply to register a comparable UK trademark (retaining the original filing date) in the 9 months after 1 January 2021. Standard UKIPO fees will apply to these applications. Upon the expiry of the transition period on 31 December 2020, brand-owners will be required to make separate applications for trade mark protection in the EU and UK going forward.

    A similar approach will be taken by the UKIPO in respect of Registered Community Design rights. Additionally, to avoid a mismatch in the regimes which protect unregistered design rights in the UK and EU, the UKIPO will create two new types of unregistered design right, a Continuing Unregistered Design (CUD) and a Supplementary Unregistered Design both of which come into effect on 1 January 2021 and mirror the EU Unregistered Community Design in terms of validity, infringement and term.

    The UK will not participate in the implementation of the new EU Copyright Directive, marking a potential area for the development of a substantial divergence between UK and EU copyright law.  Nevertheless, as the UK will remain a signatory to international treaties such as TRIPS, the Berne and Rome Conventions, the UK will not have complete freedom to amend its statutory copyright regime. 

    Injunctions which prohibit the infringement of an existing EUTM in the UK that are in place as of 1 January 2021 will be enforceable against the "cloned" UK trade mark. However, decisions of the EU Court of Justice issued after the expiry of the transition period will no longer be binding in the UK, nor will pan-EU injunctions. This is likely to lead to an increase in the cost of enforcement of rights as separate proceedings will have to be taken in the UK. 
  2. Risk of differing frameworks for patent protection - The EU in recent years has been working towards a Unitary Patent System with a Unified Patent Court (UPC). The UK has announced it no longer intends to participate in the UPC system.  This means that patents will continue to require a separate UK registration to ensure protection in the UK, rather than having the option of a unitary patent under any new patent regime.
  3. Risk of uncertainty concerning the transfer of data between Ireland and the UK - Upon the expiry of the transition period the UK will become a third country for the purpose of data transfers with EU Member States. The UK government has taken the position that the EU will be treated as an adequate jurisdiction for the purpose of personal data being transferred from the UK to the EU. There is currently no guarantee that the European Commission will grant a similar adequacy decision to the UK for the purpose of EU to UK data transfers.   
  4. Risk of divergence in data protection regimes - The General Data Protection Regulation (GDPR) will no longer apply directly in the UK at the end of the transposition period.  However, as part of the Withdrawal Agreement, the UK has agreed that the GDPR will be absorbed into UK's domestic Data Protection Act 2018.  This will avoid a divergence in data protection rules between the UK and the EU. Companies with operations in Ireland and the UK will from 31 December 2020, be subject to two separate, albeit substantively similar data protection regimes.
  5. Risk of businesses relocating to UK - Following the transition period, and in the absence of any further agreement on an EU adequacy decision, the UK may possibly be in a position to adopt a more business friendly data protection regime than is applicable in the EU. This could result in certain companies relocating to the UK to avail of the more favourable regime (should one be put in place), reducing the attractiveness of Ireland as a European base for overseas companies.

Contact:

 David Cullen    Laura Scott

David Cullen
Partner

Email David
+353 1 639 5202

 

Laura Scott
Partner

Email Laura
+353 1 489 6508