WF_Brexit

Intellectual Property & Data Protection – Top 5 Issues (April 2021)

  1. Divergence of intellectual property systems – The EU–UK Trade and Cooperation Agreement (the "TCA") agreed at the end of December 2020 sets out minimum standards of IP protection and enforcement to which the EU and UK will remain committed. These minimum standards are largely consistent with current IP law in the UK and EU, but the TCA also provides for flexibility in certain areas which may result in a divergence of intellectual property systems in each jurisdiction in the future.  The TCA does not alter the arrangements set out under the Withdrawal Agreement agreed in 2019. These arrangements deal on a more granular level with the impact of the UK leaving the unified EU intellectual property regimes. The following measures have been provided for under the Withdrawal Agreement to reduce the disruption to rights-holders:

    •  Trade Marks: Under the Withdrawal Agreement, since 1 January 2021, a European Union trade mark ("EUTM") registration will no longer extend to include protection in the UK.  To deal with this, on 1 January 2021 the UK Intellectual Property Office ("UKIPO") automatically converted all EUTMs existing as of 31 December 2020 into "cloned" UK trade marks without any loss of priority, filing or seniority dates and at no cost to the owner.  EUTM applications which were pending on 31 December 2020 were not converted into "cloned" UK trade marks by the UKIPO but applicants with a pending EUTM application were permitted to apply to register a comparable UK trade mark (retaining the original filing date) until 30 September 2021. Standard UKIPO fees apply to these applications. As of 31 December 2020, brand-owners seeking trade mark registration in the EU and the UK are now required to make separate applications for trade mark protection in each of the EU and UK going forward. Brand owners should be aware that only EEA based representatives will be permitted to act on their behalf before the EUIPO.

      Design Rights: Design protection in the UK is now solely governed by domestic UK design legislation. Like the approach taken by the UK in respect of registered EUTMs, any published Registered Community Design (RCD) rights which existed as of 31 December 2020 have been cloned by the UKIPO on to the UK designs register.  Changes have also been made to UK law to facilitate the continuing protection of unregistered designs in the UK. The UKIPO has created two new types of unregistered design right which are intended to fill the gap left by the EU Unregistered Community Design ("UCD"). The first of these new rights, the Continuing Unregistered Design will protect any design previously protected by the UCD that still has time left to run (i.e., any design which was made publicly available less than three years ago). The second new right, the Supplementary Unregistered Design Right is intended to replace the UCD in the UK going forward. One point that is important to note with regard to unregistered design protection in the UK is that the TCA does not provide for a system of reciprocal protection for unregistered design rights. As a result, designers will now need to choose between disclosing in the UK and getting UK-wide protection or disclosing in the EU and getting EU-wide protection under the unregistered community design right.

      Copyright: The UK has indicated that it will not participate in the implementation of the new EU Copyright Directive (effective across the EU since June 2021), 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.

      Enforcement: Pan-European injunctions granted by an EU Court in respect of an intellectual property right will no longer have effect in the UK. However, any pan-European injunction grounded on a EUTM, RCD or UCD which was in place and still effective on 31 December 2020 will be enforceable as against any the equivalent "cloned" UK trade mark or design right created by the UKIPO.  Similarly, a UK court can still grant pan-European injunctions in proceedings commenced before 1 January 2021. Further decisions of the Court of Justice of the EU issued after the expiry of the transition period will no longer be binding on UK Courts or tribunals. 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 - In recent years there has been a push towards a Unitary Patent ("UP")  with a Unified Patent Court ("UPC") with the latter now expected to be up and running by late 2022/early 2023. The UK has announced it no longer intends to participate in the UP or UPC systems. Accordingly, patents will continue to require a separate UK registration to ensure protection in the UK even when the UP system commences.
  3. Transfer of data between EEA and the UK - On 28 June 2021, the European Commission ("EC") adopted its adequacy decision for the UK, thereby confirming that the UK GDPR provides an equivalent level of protection to that in the EU. This decision enables personal data to continue to flow freely from the EU/EEA to the UK without having to implement further safeguards. Similarly, it allows businesses to continue to receive personal data from the UK to the EU/EEA, avoiding any interruption to such data transfers.
  4. Risk of divergence in data protection regimes minimised – Following Brexit, the UK absorbed the General Data Protection Regulation ("GDPR") into its domestic Data Protection Act 2018 and UK GDPR. Since the GDPR is no longer enforceable in the UK, this gives rise to a risk of divergence with the two regimes.  However, the EC's inclusion of a ‘sunset clause' in the UK adequacy decision may address some of such risk. The effect of this clause is such that the decision will automatically expire four years after its entry into force, (i.e., on 27 June 2025). At this stage, the adequacy decision can be renewed by the EC, provided that the level of data protection in the UK continues to be adequate. Moreover, should the UK deviate too far from the level of protection it currently has in place, the EC may revise its adequacy decision. Although the foregoing may curb the tendency for significant divergence in data protection rules between the UK and the EU, companies with operations in Ireland and the UK should be aware that they are now subject to two separate, albeit substantively similar, data protection regimes.
  5. Appointment of Article 27 Representatives – Despite the adequacy decision, organisations located solely in the UK but who offer goods or services to, or monitor the behaviour of, individuals in the EEA will likely need to appoint an EU-based representative (in a state in the EEA in which the personal data are being processed). The EU-based Representative is also responsible for maintaining records of processing activities, as required of the organisation under Article 30 of GDPR. Additionally, organisations located solely in a jurisdiction other than in the EEA or UK, but who offer goods or services to or monitor the behaviour of individuals in the EEA and/or UK will now need to appoint an EU-based representative and/or a UK-based representative (as required under UK GDPR). The nomination of representatives will invariably involve business and legal analysis for relevant organisations, especially where the personal data of individuals in multiple jurisdictions is processed. Once an appointment of a representative has been made this should be documented in relevant data protection notices and privacy policies along with the contact details of the representative(s).

Contact:

 David Cullen    Laura Scott

David Cullen
Partner

Email David
+353 1 639 5202

 

Laura Scott
Partner

Email Laura
+353 1 489 6508