As the UK embarks on the post-Brexit era, its future is bright as a key player on the global IP stage. The UK was already recognised worldwide for the strength of its IP systems and infrastructure, which is complemented by its network of highly qualified and trusted legal representatives and underpinned by its respected IP court and dispute resolution system.
Now, with the uncertainties of Brexit largely resolved, the UK is well placed to seize the opportunity to consolidate and advance its position as an international hub for IP; ready to set a world-leading standard for IP registration, enforcement, and monetisation.
Where are we now?
Tireless work from the UK Intellectual Property Office (IPO) and lobbying from key stakeholders, including the UK Chartered Institute of Trade Mark Attorneys (CITMA), ensured a strong outcome for the UK’s IP position at the end of the transition period on December 31, 2020.
The UK ensured continued protection for EU trademarks and Registered Community Designs by creating more than two million equivalent rights in the UK. This covered all EU rights that were registered by 11pm UK time on December 31, 2020 and were created at no cost to right holders. EU applications that were pending at the end of the transition period have a nine-month priority window—until the end of September 2021—to file in the UK.
Another key change in 2021 is the requirement that all new proceedings before the IPO must be brought from an address in the UK, the Channel Islands, or Gibraltar. The requirement of a UK address for service is a vital component of maintaining the high standard of the UK’s IP environment and protecting the businesses that rely on the expertise of UK IP professionals.
It is in the interest of IP owners with UK rights to seek advice from qualified professionals who are familiar with UK law and practice. The UK address for service requirement facilitates this.
Despite the uncertainties around Brexit, the end of the transition period was followed by a surge in UK trademark filings, with the number of new applications up by 50% in January 2021 compared to the same period in January 2020. This emphasised the widespread recognition that the UK continues to offer an attractive IP environment.
In March, this was confirmed by the US Chamber of Commerce’s publication of the Global IP Index, which ranks the national IP environments of 53 economies. In it, the UK ranked top for its trademark environment and second, behind the US, for its overall IP framework.
“Independence from the EU offers the UK greater freedom to set and develop IP policy and practice.”
Richard Goddard, CITMA
Freedom to set IP policy and practice
Independence from the EU offers the UK greater freedom to set and develop IP policy and practice. While the harmonisation of UK and EU trademark and design law was undoubtedly an enabling factor in facilitating the ultimately smooth transition, the UK will now be able to follow its own priorities and enhance the infrastructure and systems on which its IP environment depends.
The IPO is seizing the initiative to innovate with the recently announced launch of a major programme designed to transform IP services and enhance the value the IPO adds to the UK economy. At its heart will be a single, integrated system for all registered IP rights (patents, trademarks and designs) that allows users to seamlessly apply for and manage all their IP rights in one place.
This will incorporate advanced analytics tools to facilitate IP searching and data interpretation. The IPO’s wealth of data will also be opened up to researchers, businesses and inventors. This ambitious and dynamic project, which is scheduled to run for the next five years, aims to create a world-leading IP environment and could result in significant positive changes to UK practice.
In terms of case law, some divergence from the EU is inevitable as the UK’s IP courts make decisions in the post-Brexit landscape. Predicting exactly where this divergence will occur is not straightforward. Courts and policy makers must be mindful that there are benefits of maintaining a degree of harmony with EU law. Too much change, too quickly, would be detrimental to businesses that are seeking stability in today’s disrupted commercial environment.
Potential areas for divergence exist around the concepts of bad faith, intention to use, and genuine use. CITMA argues that the UK is particularly well-suited to dealing with bad faith cases because of the ability to seek disclosure and to cross-examine witnesses to establish the intention behind filings.
One of the remaining post-Brexit questions centres around the exhaustion of IP rights—the limits on how rights can be used to prevent the resale of genuine products, including those entering the country from elsewhere (parallel imports).
Despite the UK government’s efforts to maintain the status quo, its position was not reciprocated by the EU, and the result is a mismatch between the UK and EU positions. UK goods placed on the market by, or with the consent of, the right holder will no longer be considered exhausted in the European Economic Area (EEA), meaning the right holder’s permission may be required if an organisation wishes to export these goods to the EEA.
In contrast, the IP rights in goods placed on the market in the EEA continue to be exhausted in the UK, meaning parallel imports from the EEA are unaffected. The UK government plans to conduct a formal consultation to seek stakeholder views about what should be done about this issue, which will provide more clarity around its intentions.
There are also possible statutory changes to trademark law on the horizon, as the UK builds new trade relationships. Trade agreements typically have an IP chapter, and it is important that any proposed commitments and obligations are carefully considered during negotiations to ensure that they do not adversely affect the existing UK regime or conflict with existing IP treaty obligations.
Compromising the strength of the UK’s IP environment would represent a material threat to the nation’s competitiveness and reputation for innovation and must be avoided.
“Compromising the strength of the UK’s IP environment would represent a material threat to the nation’s competitiveness and reputation for innovation and must be avoided.”
When making decisions about the future of the UK’s IP environment, it is essential that policy makers understand the interconnected features that contribute to the overall excellence of the current landscape. Changes made to one area of IP law or practice may have significant consequences in other areas and a holistic view must be taken to avoid negative unintended consequences.
For example, making it quicker and easier to acquire trademark rights seems like a positive evolution, but it will benefit users only if those rights are robust and enforceable. If applicants proceed without obtaining advice from qualified UK IP professionals, the resulting application may not adequately cover their interests and be vulnerable to cancellation.
Far from benefiting the applicant or system, this would introduce more cost and complexity for applicants and other rights holders, ultimately creating a less attractive ecosystem in which to protect and monetise IP rights.
Policy makers must understand how the different elements interact and focus on maximising the overall benefit when making choices about the future.
Additionally, it is just as important to consider the international perspective as it is to focus on the benefits for UK businesses when deciding IP issues.
Businesses and organisations around the world hold registered UK rights, not just those based in the UK. Our strong and enforceable IP environment is part of what makes the UK an attractive place for rights holders to do business. This is of considerable value to the UK economy, and it is important that it is protected as the country moves into a new era.
This is an exciting period for the UK’s IP sector, with much to debate and a definite appetite for innovation. It is clear there is a key role for the UK’s community of qualified IP professionals in delivering essential advice and supporting businesses to successfully navigate and continue to benefit from one of the world’s best IP environments.
Richard Goddard is president of CITMA. He can be contacted at: email@example.com
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