Partner Debbie Brett, in our Corporate & Commercial team, looks at the United Kingdom Intellectual Property Office's (“UKIPO”) recently published guidance on how UK businesses and individuals can best protect their Intellectual Property (IP) rights, in the EU and internationally.
Background
As many people are aware, the relationship between the EU and the UK has changed radically in recent years. In relation to IP rights, the UK have signed the Trade and Co-operation Agreement and the EFA EFTA-UK Agreement. These agreements govern the UK’s trading relationships with EU and EEA member states and they ensured a separation between IP rights in the UK and those enjoyed in the EU.
In view of the above, it is essential that proactive steps are taken by businesses to protect their IP rights. IP rights are territorial and so it should not be assumed that IP protected in the UK, is protected elsewhere in Europe or beyond.
In general, there are two avenues by which IP rights can be protected. These are:
- A regional or international process by which traders can register and protect their rights across many countries at once (for example, registering an international trade mark using the Madrid System); and
- Making an application to the individual IP offices of the relevant countries that you want your trade mark to be registered in (e.g. registering a trade mark with the United States Patent and Trademark Office for use in America).
We will now discuss the guidance in relation to different types of IP rights.
Trade marks
Following Brexit, if a trade mark is registered in the UK, it will not be protected in the EU or EEA.
However, trade mark protection in the EU is comparable to the regime which exists in the UK. This protection covers trade marks of a variety of types including signs, colours, shapes, or sounds which can be used to designate a ‘badge of origin’ for a trader’s goods or services.
Businesses have several options when protecting a trade mark in the EU, these include:
- National: It is possible to apply directly to the national trade mark office of each individual country they wish to trade in.
- EU: alternatively, an EU Trade Mark (EUTM) may be applied for through the European Union Intellectual Property Office (EUIPO). This protection covers all EU member states and can only be applicable in relation to EU in its entirety. An EUTM lasts initially for 10 years but can be renewed for as long as the applicant requires it.
- International: an application can also be made using the Madrid System, which provides international protection to IP rights. This can be applied for via the UK office, the EUIPO or the World Intellectual Property Office (WIPO). This covers over 120 countries, including all the states which constitute the EU.
Designs
As similar to other IP rights, any designs protected in the UK are not automatically protected in the EU. There are several options by which businesses can protect their designs in the EU. These include:
- National: An application can be made to protect the design through that country’s individual national IP register.
- EU: An application can be made via the Registered Community Design (RCD). This can be submitted via the UKIPO or the EUIPO. The RCD will be applicable to all EU states. It is valid for five years and can be renewed every 5 years thereafter for a maximum term of 25 years.
- International: international protection can be applied for using the Hague System for the International Registration of Industrial Designs. This can be applied for via WIPO and is applicable in over 90 countries.
Copyright
Copyright is a national right that each country provides for its individuals and businesses, independently. However, most UK as well as EU copyright works (including books, films, and music) enjoy mutual protection as international treaties on copyright have been entered into.
Priority periods
It may be possible for traders to enjoy priority for their applications to IP offices in other countries. This can be enjoyed if applications are made within a certain timeframe from the original application to the UKIPO. Priority will mean that the later application will be treated as if it was made on the same date as the earlier application. The time limits within which to enjoy this protection are as follows:
- Patents: Priority can be enjoyed if the application to the other country or countries is made within 12 months of applying for the patent in the UK.
- Designs: The application will need to be made within 6 months of the corresponding application for the design in the UK.
A quick note on enforcement of IP rights
To protect their rights most effectively, it may be useful for UK businesses to actively monitor the wider international marketplace to ensure that other people are not unlawfully using their IP. There are several options for traders to enforce their rights if there is an infringement including litigation in civil and criminal courts. Other means of enforcement are also available such as mediation.
Usually, enforcement issues are handled domestically in the country themselves. It has been suggested that traders visit national IP office websites for further information on enforcement.
If you require further information in regards to protecting your IP rights, in the UK or internationally, please contact our Corporate and Commercial team as we would be delighted to discuss how we may be able to assist.
For further information or legal advice, please contact law@blandy.co.uk or call 0118 951 6800.
This article is intended for the use of clients and other interested parties. The information contained in it is believed to be correct at the date of publication, but it is necessarily of a brief and general nature and should not be relied upon as a substitute for specific professional advice.
