IP Insight: Brexit and IP, Part 4, Domains

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 Kostas Retzopoulos​

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 the 1st of January 2021, with a trade deal, what does this mean for Intellectual Property rights holders?

Part 4 of our information and analysis concerns changes to web domains. 

Domain Names

• If UK-based businesses and individuals that cannot demonstrate that they are legally established in a continuing EU Member State/show EU residence or citizenship, then the existing .eu domain names held by such businesses and individuals will be subject to withdrawal and revocation. In this event, you should organise the migration of any important services and website which are dependent on a .eu domain to other domains (.net,.co.uk, .com etc.).
• If UK-based businesses and individuals can show the above then a review of contact data on the domain name register should be changed to make sure the contact details of the registrant who can show a relevant establishment or residency/citizenship in a continuing EU Member State, is present to keep .eu domains valid.

Details

UK clients with .eu registrations received a notification on 01/10/20 from EURid (the Registry) to advising owners on the loss of their .eu domain name registrations, post-Brexit. In particular:

“On 1 October 2020, EURid has notified by email all UK registrants and their registrars that they will lose their eligibility as of 1 January 2021 unless they demonstrate their compliance with the .eu regulatory framework by updating their registration data before 31 December 2020.”

Moreover, according to the same source:

“On 1st February 2020, the United Kingdom left the European Union (Union). The Withdrawal Agreement […] provides for a transition period until 31 December 2020. During the transition period, undertakings and organisations established in the United Kingdom and United Kingdom residents and citizens will continue to be able to hold and register a .eu domain name. […]”

Brand owners that have received the advice should have already taken steps through their registrar.

If a brand owner has not received the advice yet (make sure you check your spam folder) should seek further advice through their registrar, IP legal partner or brand protection manager.

A new circular from EURid will go out this month to remind owners of the changes.

The UK Government has issued advice on eligibility here.

There will be a lot of questions over the ownership and protection against 3^rd party, bad faith registrations. These situations create perfect conditions for opportunistic registrations - which is something to note.

The first solution may be the registration or transfer of ownership to an EU subsidiary of the brand owner that solves the problem of local presence.

If this is not possible, registrants may use the strategy of using “local presence agents” for a fee that will allow owners to keep the domain names for ongoing purposes.

Should you require to discuss the matter further, feel free to contact us or your registrar for actionable solutions.

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.