Keep calm and plan ahead

Jonathan Silverman addresses the potential effects of Brexit on IP practitioners and clients

If there's one thing lawyers hate it is uncertainty. It goes against the grain to not be able to give definitive advice to clients and Brexit has created the perfect storm of uncertainty for IP lawyers.

The IP world has been significantly affected by globalisation and the digital revolution. No longer does a client simply address their home market with services or goods; digital technology knows no national boundaries. But once
the UK parts with the EU, life
will become far more complex.

Harmonisation of IP laws
has been a key component to advising with certainty. With much of UK IP law shaped by
EU regulations, the break may remove a key building block.
But how and when to advise clients with any certainty is difficult. So, what should one
be saying to them at present?

To quote a familiar but unregistered trade mark: 'Keep calm and don't panic.' Nothing has changed, until parliament debates the referendum result and serves notice under article 50. Even then there is likely to
be two years of negotiations.
Yet that doesn't mean some sensible planning for the future is not worthwhile. Indeed, it would be prudent for clients
to consider where they might
be down the line.

Trade marks

Consider securing a UK trade mark in parallel with an EU mark. This may be prudent since one possible Brexit endgame could be that existing EU marks will have no validity here whatsoever.

Registered designs

Clients should be asked whether they have detailed portfolios of their existing registered designs and to carry out a review as to where those portfolios might be vulnerable to change. On leaving the union, the UK will no longer form part of the EU's trade
mark or registered community design systems. Owners of national marks will not be
able to challenge conflicting
EU applications. This adds a complication for passing off based on acquired reputation through unregistered use
outside of the UK.

The UK and EU IP systems
could run separately but contemporaneously, so it will be crucial to maintain a watching brief on both the UK Intellectual Property Office (IPO) and any European Court of Justice (CJEU) decisions that decide on the need to file, prosecute, and renew EU marks and designs.

Handling opposition and cancellation actions will remain equally important. However, UK-qualified solicitors and trade mark attorneys will lose out, as they will no longer be able to represent clients before the
EU IPO, unless the UK becomes
a member of the European Economic Area (EEA).

Patents

The patent situation is equally complex. While the European Patent Convention, of which the UK is a member, is not an organ
of the EU, there will soon to be
a new system overlaying the current one.

The unitary patent aims to
give patentees the option to apply for a single patent covering most member states rather than separate national patents. They are enforceable in all EU states
via the Unified Patent Court (ironically under construction in London). Therefore, Brexit could see duplicate registrations and more complex enforceability.

Possible steps to consider include a review of existing portfolios and advising clients
on the regulation governing registration. It is worth recognising that one major implication of Brexit relates to
IP remedies, which are likely to
be affected. For example, how will UK courts deal with infringement of EU rights and enforce EU rights in the UK?

An additional concern involves drafting contracts with any IP element, such as manufacturing, licensing, coexistence, or franchising. Care needs to be taken over how to address the separate body of rights which will exist once the UK is no longer part of the EU's IP framework. This is going to be quite a challenge since numerous statutes will
need to replace outgoing EU
base legislation and may well
give rise to lobbying by groups with differing interests.

Copyright

Arguably, one area where
EU law has yet to achieve true integration is copyright. However, continuing digitalisation and increasing web usage might
be more important drivers for harmonisation.

The UK will seek to retain access to the EU single digital market. This could alter the landscape since it is considering geo-blocking cross-border content, platform liability, and copyright exceptions. Clients operating in this area will require a watching brief by their lawyers, especially with an EU desire to promote data protection laws that may reach further than the UK desires.

While the unravelling of
EU legislation will not be a comfortable situation for lawyers, it might also prove
an opportunity for UK law to
evolve independently from Europe. However, a driver for harmonisation will remain to make trade both as easy and
as profitable as possible.

If the UK adopts the Norwegian model and remains
a member of the EEA and the European Free Trade Association, it will continue to be bound by EU IP legislation and influenced by harmonisation directives and CJEU decisions. Maybe the old British art of compromise could yet save the day.

Jonathan Silverman is the senior partner at Silverman Sherliker www.silvermansherliker.co.uk 

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