IP Insight: Brexit and IP, Part 3, Copyright and Representation

BREXIT AND IP: WHAT YOU NEED TO KNOW

This series of blogs by Virtuoso Legal, the IP specialists cover key changes to the status quo and priorities for businesses operating (or planning to) in Europe.

Virtuoso Legal is offering a limited number of FREE 15-minute IP and Brexit clinics without principal and founder Elizabeth Ward, to help businesses identify the key issues to address before (and after) 1st of January.

Click here to email Martin to request an appointment.  

By James Gilmer and Liz Ward​

Introduction

What is the current position? 

For the most part, the IP laws are harmonized in Europe.

The UK's IP laws consist largely of transposed EU law from EU Directives and EU Regulations.

However, as the UK has now left the EU as of 1st of January 2021, with a trade deal, what does this mean for Intellectual Property rights holders?

Part 3 of our information and analysis concerns Copyright, associated rights and changes in representation. 

Copyright & Related Rights

• UK Copyright law will remain largely unchanged given it is largely harmonized internationally by a number of treaties and, in the EU, by a body of EU copyright legislation that builds on the international treaties. As such, Most UK copyright works (such as books, films and music) will still be protected in the EU and the UK because of the UK’s participation in the international treaties on Copyright.
• However, the main aspects of Copyright & related rights which will be affected going forward from 1^st January 2020 will be for the following: Copyright clearance in satellite broadcasting; sui generis database rights; portability of online content services; orphan works copyright exception; accessible format copies of copyright works; Collective rights management; artist resale rights; cable transmission of works; qualification of copyright and the use of Satellite decoders. For more information please click here.
• For more information on parallel exports from the UK to the EEA after Brexit please click here.  

Representation before the EUIPO/ UKIPO after Brexit

Based on the EUIPO General Additional Guidance for Right Holders and Representatives in view of the end of the Brexit transition period on the terms of the UK withdrawal agreement (10 September 2020):

• For the sole act of applying for registration of an EU Trade Mark or RCDR, no representation is needed (Art. 119(2) in fine EU Trade Mark Regulation). Persons established in the UK or their employees can thus apply for an EU Trade Mark.

• To file an International Design/Trade Mark application, designating the European Union as the home/priority filing, an applicant has to be either a national of an EU Member state or has to have a domicile or real and effective industrial or commercial establishment in an EU Member state.
• Except for ongoing proceedings before the 1^st January 2020, a UK based legal practitioner or professional representative is will not be able to represent parties in EUIPO proceedings (registration proceedings, opposition proceedings, revocation or invalidity proceedings), from 1^st January 2020, unless they are:

1. i) qualified in one of the Member States of the European Economic Area (EEA); and
2. ii) is established in the EEA, and iii) entitled to act as a representative.

• In respect of the above, if you have an employee in your business, who is a natural or legal person having their domicile or principal place of business or a real and effective industrial or commercial establishment in the EEA they may represent parties before the EUIPO in proceedings.
• If your representative is a UK qualified & established practitioners/ professional representative, you will not need to designate a new representative to maintain your Trade Mark or RCDR (Renewals).
• Currently, the UK government has not put in place any reciprocal requirements to mirror that only UK qualified & established practitioners/professional representative will only be able to act for those proceedings at the UKIPO. However, non- UK Brand owners should be acting proactively to ensure that they have a UK address for the service of documents or the UK qualified & established practitioners/ professional representative to act for them in IP matters relating to the UK.

Proceedings at the UK Intellectual Property Office

• The IPO is considering making changes to the rules on correspondence addresses (‘address for service’ - AfS) at the end of the transition period.
• If implemented, this will mean that clients based outside the UK or Channel Islands would need to ensure that they have a UK AfS (for example, Virtuoso Legal are nominated as the correspondence address for UK IPO correspondence).
• A UK or Channel Island AfS would be required either for new applications at the UK IPO or to start contentious proceedings such as oppositions.

CONCLUSION

Brexit will impact IP in a number of ways. However, having a clear understanding of how it will impact your business and what to do about it ahead of time is key to success.

Virtuoso Legal is offering a limited number of FREE 15-minute IP and Brexit clinics without principal and founder Elizabeth Ward, to help businesses identify the key issues to address before (and after) 1st of January.

Click here to email Martin to request an appointment.  

ABOUT VIRTUOSO LEGAL?

Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide.

Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court.

In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique.

The firm and its professionals are ranked yearly in legal directories such as the Legal 500 and Chambers and Partners, cementing their status as a Top 2% law firm in the world.