Brexit and IP law: the consequences for lawyers

The 18 months which have passed since Brexit leave us with an opportunity to take stock and ask whether IP finds itself in smooth waters – or adrift in the middle of a gathering storm?

Harmony?

Legislatively, much of the pre-Brexit harmonisation, which was significant, especially for designs, trademarks – and to some extent, copyright, remains. The last few years have seen much uncertainty and many challenges for businesses. Changes to the IP regimes beyond those required by Brexit have largely been avoided, with legislative certainty prioritised. Even where new species of IP right have been created, such as the ‘Supplementary and Continuity Unregistered Design,’ they mirror existing EU regimes. Pre-Brexit case law remains relevant. There therefore remains a degree of reassuring familiarity for the IP practitioner.

Certainty?

This desire to maintain legislative certainty has, however, increased practical uncertainty post-Brexit. Advising clients on risk has taken on a more complex dimension – and the potential costs to clients of gaining greater certainty in their IP matters has increased.

To take an example, clearing new trademarks for a client has become more complex. The UK register, already crowded, has exploded post-Brexit with the creation of comparable UK registrations from those on the EU register.

While EU trademarks (EUTMs) were relevant considerations pre-Brexit, they now simply appear on the UK register as comparable rights. However, finding a way through is more complex. Comparable UK rights which might not be in use here, therefore seemingly vulnerable to non-use action, might still be in use in the EU – and therefore be defensible.

Comparable rights owners automatically gained such a right. Little can be inferred as to whether this is indicative of an interest in the UK market, as  it was a passive not active acquisition of rights. This has created a much greater level of uncertainty when advising clients as to the risks associated with their proposed mark – the opposite to the aims when the implementing legislation was put in place.

The calm before the storm?

The legislative calm may also soon break. The EU and UK have launched a variety of reviews and consultations – most recently on design rights and AI in the UK. Implementation and interpretation of the EU Copyright Directive is underway – and it is a Directive to which the UK did not subscribe. The EU is moving forward with the Digital Services Act.

What lies ahead?

Are we therefore set for several years of choppy, if not tumultuous waters, before things settle down – or is this a false dawn? Do we find ourselves in the eye of a storm – not at the edges? It may be for some areas, as with the above example, waiting out the storm is the right approach. Unwanted comparable rights may gradually not be renewed, so non-use in the UK will start to matter. This does not provide the complete solution, however. Inaction is a sticking plaster rather than a cure.

Planning is preparation

Far better to prepare for the waves. Legislative change takes time – and keeping up with this will be important. It is coming – and there will be divergence from the EU. This should be seen as an opportunity for practitioners to advocate for the changes we want. We, and our clients, know better than most the areas that work – and those that don’t. Active participation is therefore to be encouraged, to provide the widest range of perspectives as new approaches are crafted.

In the meantime, and unlike our EU colleagues, we must also keep current in both UK and EU decisions for some time yet. They might not be binding but one suspects the courts will have an eye on EU developments. Deciding on the weight to give those EU decisions will become a vital skill for IP practitioners, but increases the uncertainties faced by those practising in IP.

Conclusion

I started this article noting the legislature had sought out certainty, for understandable reasons. This has, however, caused uncertainty to both practitioners and clients. Perhaps, therefore. we should abandon the becalmed legislative waters and instead turn and face the strange legislative uncertainty – and more quickly arrive at the calm waters beyond.

Peter Vaughan is deputy course leader on Nottingham Law School’s postgraduate diploma in Commercial Intellectual Property Law: ntu.ac.uk/study-and-courses/academic-schools/nottingham-law-school

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