Brexit: Intellectual Property Rights (IPRS)

Gemma Wilson considers the key implications for IPR holders arising from the UK’s exit from the EU.

IPR is a key intangible asset for any travel business. It covers everything which can be considered a ‘creation of the mind’. This includes inventions, literary and artistic works, designs, symbols, names and images. Your brand’s name and logo can be a perfect starting point for looking at what IPR you have in place and whether there is sufficient protection for your brand identity.

The unique aspects of your business’ branding and identity are fundamental. Having the right type of IP protection helps you to protect that brand, add value to your business and stop competitors and copycats from encroaching on that identity and benefiting from your business’ goodwill.

Trade marks

Many things can be a trade mark – names and logos are the most common within our industry but it is essentially anything that allows consumers to distinguish your goods or services from those of another provider. There are a number of considerations to take into account when registering a trade mark. Your mark must be unique so it cannot be confused with a pre-existing mark. It cannot be descriptive – it must be sufficiently distinctive so as to operate effectively as a trade mark. Once successfully registered, trade marks must be renewed every year. Trade marks can (and will) in theory last forever, once registered!

What happens after 31 December 2020?

Trade marks are territorial in nature – they provide protection in selected geographic areas. Currently, the scope of protection provided by a European Union trade mark (EUTM) is the whole of the EU as well as the UK. However, following 31 December 2020, EUTMs will no longer offer protection within the UK. Therefore, in order to ensure continued protection for pre-existing EUTMs, the UK Intellectual Property Office (UKIPO) will place on the UK trade marks register a new UK registration for each EUTM that was on the register the previous day. These will be known as comparable trade marks. The comparable mark will cover the same sign, in respect of the same goods and services and will have the same filing/priority date as the EUTM as well as the same renewal data and seniority in the UK. This is only applicable to those EUTMs that were registered before the end of the transition period. If you have any EUTMs which have not yet been registered as at the end of the transition period you will need to look at your trade mark strategy and make sure that you have adequate protection in your key territories.

In addition the effect of Brexit means that those owners who hold only a UK trade mark (UKTM) will only be able to oppose other UKTMs and will no longer be able to oppose EUTMs as they will not be notified if there was an application to register an EUTM that was similar to their mark. Those that have EUTMs registered before the end of the transition period will still be able to oppose a UKTM application as they will be notified of any application that may infringe their mark.

Copyright

The law on copyright in the UK is set out in the Copyright, Designs and Patents Act 1988. Copyright seeks to protect original works. It protects the form of expression of ideas, not the ideas themselves. An idea for a unique holiday advertising campaign cannot be protected by copyright. The advertising campaign itself is protectable. The general rule is that the first owner of the copyright will be the author (exceptions to this rule include works made by a person in the course of their employment) and copyright lasts for a set period which is usually the life of the author, plus 70 years from the calendar year of their death.

What happens after 31 December 2020?

Copyright is not actually mentioned in the Withdrawal Agreement, this is probably due to the fact that it has been largely harmonised across the EU. The UK is in fact a signatory to a variety of international copyright treaties participated in by EEA and many non-EEA countries. In short, this means that most copyright law will remain unaffected by Brexit, at least for the time being!

This is a good time to consider whether your business’ unique output is sufficiently protected, though. Copyright notices on your internal and external communications, pitches and press releases will discourage copying and identify your business as the owner of the copyrighted work.

Database Rights

Databases (including customer databases) are modern forms of property which can be sold or licensed to third parties and they are often a business’ most valuable asset. Proprietary databases include contact management systems, intranets, websites and purchase order systems. Database rights exist independently of the copyright in a database and protects the compilation of information that makes up the database. A database rights lasts for 15 years from the end of the calendar year in which the making of the database was completed.

What happens after 31 December 2020?

The Withdrawal Agreement provides that holders of database rights arising under the EU Database Directive created before the end of the transition period will be accorded an equivalent UK right after the transition period with the same term of protection as the EU right. This approach is comparable to the UK’s ‘comparable rights’ approach in respect of trade marks (see above). EU database rights that subsisted in the UK on ‘exit day’, whether held by UK or EEA organisation will therefore continue to subsist in the UK until they expire.

Furthermore, the Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 were designed for a no-deal scenario and they amend the Copyright and Databases Regulations 1997 to make UK citizens, residents and businesses eligible for new UK-specific database right in qualifying databases they make after the transition period. This new right will give the same rights in the UK as the EU database right gives in the EEA and for the same duration.

Final thoughts

Whilst Brexit will inevitably mean a change in how your business approaches IPR, there are still plenty of opportunities for you to protect your key intangible assets. Though the EU and the UK regimes will split apart from each other, it’s key to remember that you are still able to secure protection in those territories where you are making sales. A good brand protection strategy will not only add value to your business but also grant protection for years to come.

Additional research by Sophie Brazier

If you have any questions relating to your business’ Intellectual Property Rights, and what effect Brexit may have on these assets please contact Gemma or her colleagues in the commercial team

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