by Sally Britton from Mischon de la Reya
After years of Brexit debate, the end is now in sight. Come 11pm on 31 December 2020, the transition period will officially have ended. During the transition period, the UK has still been treated as if it were a Member State, but all that will change on 1 January 2021.
The UK/EU Withdrawal Agreement provides mechanisms to ensure existing EU Intellectual Property (IP) rights remain protected in the UK through cloned rights, and to minimise disruption in ongoing disputes. Whether a trade deal is reached or not, there are a number of steps to consider in relation to IP rights.
For gaming companies, IP rights are some of their most valuable assets and so it is vital to ensure that portfolio and filing strategies have been properly audited, in the light of Brexit, to identify any potential gaps in protection.
Trade Marks and Designs
Many gaming companies have taken advantage of the cost-effective regime for obtaining EU-wide protection for their trade marks and designs. New EU trade marks and designs applied for on or after 1 January 2021 will no longer extend to the UK and from that date it will be necessary to seek separate protection in the EU and UK.
However, the UK Intellectual Property Office (UKIPO) will 'clone' all existing EU Trade Marks (EUTMs) and Designs automatically (and free of charge) to create comparable UK rights on 1 January 2021. These cloned UKs right will have the same filing/priority date as the EU right upon which they are based but, as independent rights, they can be challenged, assigned, licensed, and must be renewed separately from the EU right.
Before the cloned UK rights are created you should:
· Ensure all records relating to the EU right at the EU Intellectual Property Office (EUIPO) are correct, including ownership details.
· Budget for increased renewals and disputes relating to the cloned UK rights.
· Implement robust clearance and watching processes.
In relation to pending EU trade mark applications at the EUIPO on 1 January 2021 the UKIPO will not create a cloned UK right. Instead applicants will have a nine month window to file an application for the same mark/design at the UKIPO, and retain the earlier filing/priority date of their EU application.
If you're considering filing for an EU trade mark prior to the end of the year, it may be preferable to file in both the EU and the UK, rather than wait for the nine month window, before significant numbers of cloned rights come onto the UK register. For designs, given the speed at which designs can be registered at the EUIPO, dual applications should only be considered towards the end of the transition period.
Unregistered Design Rights
Unregistered design rights can be an important right for gaming companies. For example, they can protect elements of a computer program such as screen-displays and graphics The EU Unregistered Community Design (UCD) has been a particularly popular right, despite its short term of protection of three years
Existing UCDs will remain protected in the UK for the remainder of their term of protection. On 1 January 2021, the UK will create a new UK unregistered design right, the 'supplementary unregistered design right', which will mirror the characteristics of the UCD.
However, due to uncertainties over the rules of first disclosure for unregistered design protection to arise game designers may face a gap in protection. There are no easy answers, and designers should carefully consider their key markets and where they choose to disclose their design first so they do not adversely impact their ability to obtain protection in the other jurisdiction.
Copyright
Copyright is a significant IP right for gaming companies as it can protect computer programs and their preparatory design material as a literary work. The good news here is that substantive copyright law will remain largely unchanged post-Brexit, because those aspects that are based on EU law will be retained in UK law, and because of the UK's participation in international copyright treaties. However there will be changes in relation to cross-border protection and enforcement of copyright, for example, in relation to portability of content and broadcasting.
There may, over time, be more divergence with the EU. EU Member States have until 7 June 2021 to implement the controversial Directive on Copyright in the Digital Single Market. As this falls after the end of the transition period, the UK Government has indicated it has no plans to do so.
Domain names
.eu domain names will no longer be available for UK entities/individuals to register or renew where they are not established/resident in the EU. Unless the domain registrant details are changed, the domains will become disabled as of 1 January 2021. Consider placing ownership of such domains into EU established entities, or purchasing alternative domains for your website and email.
IP Agreements
Whilst the UK Government has said that agreements referring to an existing EUTM or design registration will also apply to the cloned UK rights, this will be subject to contrary wording in the agreement and the applicable governing law.
Accordingly, it's important to review existing IP agreements to ensure that they reflect the desired position, and to draft provisions into new agreements that clearly set out the definition of the territory of the agreement and the IP rights covered.
Where EU IP rights are licensed, the licensor should notify the licensee of the cloned UK right and ensure its creation does not breach the agreement.
Exhaustion of rights
Currently, when a trade mark owner puts their goods on the market anywhere in the EEA, it loses the ability to object to them being exported to any other EEA country – its IP rights are said to be "exhausted".
IP rights that have been exhausted in the UK and the EU before 31 December 2020 will remain exhausted in both territories.
The UK government has announced that there will be no change in relation to rights in goods put on the market in the EEA after 31 December 2020 – they will remain exhausted in the UK.
However, there will be no such reciprocity for goods put on the market in the UK - putting the goods on the market in the UK will not exhaust the IP rights in the EEA. Therefore it may be necessary to seek consent from a rights holder to export such goods to the EEA as the relevant rights will not be exhausted.
Counterfeits
From 1 January 2021, separate Applications for Action (AFA) will be needed for Customs enforcement in the EU and UK.
Where an EU-wide AFA has previously been filed in the UK, it will remain valid in the UK but will no longer be valid in the EU, and so an application should be submitted through an EU Customs Authority.
If a rights holder has filed an EU-wide AFA via one of the EU Customs Authorities covering the UK, this will cease to have effect in the UK after the end of the transition period but will remain valid in the EU Member States designated. A separate application should be filed with UK Border Force.
For more articles, check out our Preparing for Brexit landing page.