Brexit And Intellectual Property Disputes: What Lies Ahead? – Intellectual Property

With the UK’s transition period with the European Union
coming to an end, a number of procedural changes will be taking
effect in the new year, which will affect those pursuing or
defending intellectual property disputes.

The United Kingdom left the EU on 31 January 2020, with a
withdrawal agreement in place bridging the legal regimes that apply
before and after the end of the UK-EU transition period, which
expires on 31 December 2020.

Holders of intellectual property rights have now received useful
clarification as to the impact of Brexit on existing intellectual
property rights and on future applications (see guidance provided
by the Intellectual Property
Office
).

However, a number of potential or confirmed changes may affect
the ways in which parties will be able to advance intellectual
property disputes, with further clarity and confirmation awaited in
certain instances.

The key changes affecting those bringing or defending
intellectual property proceedings are as follows.

Legal representation

For those who wish to either register a new EU trademark or
commence fresh EU trademark proceedings after 1 January 2021, it is
worth noting that UK legal representatives will no longer be able
to represent clients to the EU Intellectual Property Office
(EUIPO). Applicants will instead need to appoint an EEA attorney to
represent them.

UK legal representatives can, however, continue to represent
their clients before the EUIPO in cases that are ongoing as at 1
January 2021.

In the event of parallel proceedings in the UK and the EU, this
is likely to result in an increased cost to litigants, who will now
be required to instruct legal representatives in both
jurisdictions.

Changes to address for service

The UK Intellectual Property Office (UKIPO) is due to report
back following a consultation earlier this year in relation to its
proposal to change the address for service rules.

As matters stand, in any patent, trademark, or design
applications or proceedings, an address for service outside of the
UK or Channel Islands is acceptable, provided that it is within the
EEA. However, the UKIPO is proposing to restrict the address for
service to the UK or Channel islands from 2021. International
businesses issuing applications or proceedings in relation to UK
intellectual property rights would therefore be unable to take such
action without instructing a representative based in the UK.

As at the time of writing, the results of the consultation are
unknown, and we await further clarification on the proposed change
with interest.

Power of the courts to depart from retained EU case law

Perhaps the most controversial of the changes affecting
litigation relates to the powers of domestic courts post-expiry of
the transition period.

From 1 January 2021, a new body of UK law, known as
‘retained EU law’, will be created, based on the EU law
that applied previously. Without further legislation, only the
Supreme Court and the High Court of Justiciary in Scotland (HCJ)
would be able to depart from retained EU case law.

However, in new regulations that are currently in draft form
(the European Union (Withdrawal) Act 2018 (Relevant Court)
(Retained EU Case Law) Regulations 2020), it is proposed that a
number of further courts will not be bound by EU case law from 1
January 2021, including, in England and Wales, the Court of Appeal.
The Regulations provide that, for these appellate courts, in
deciding whether to depart from retained EU case law, the test to
be applied is simply a consideration of whether it is ‘right to
do so’. The Regulations do not specify any further factors for
consideration by the courts.

Interestingly, these changes were proposed following a
consultation by the government in which respondents voiced concerns
about the extension of the powers in question beyond that of the
Supreme Court. The regulations would apply to other areas of law,
and not just intellectual property disputes, but the Chartered
Institute of Trade Mark Attorneys and the Chartered Institute of
Patent Attorneys published a response to the consultation noting
the likely impact on intellectual property infringement claims in
particular. The response submitted that such an approach would
simply lead to larger numbers of appeals and to piecemeal changes
to the law that would lead to uncertainty and inconsistency,
affecting SMEs in particular.

As at the time of writing, the draft Regulations have not yet
been approved. However, in the event that both the Supreme Court
and Court of Appeal in England and Wales have the ability to set
new judicial precedent in relation to EU case law, we will likely
see an increase in appeals and a resulting period of some
uncertainty on particularly contentious or ambiguous aspects of EU
case law.

What next?

As with the broader position on Brexit, the impact remains
somewhat unclear in relation to intellectual property disputes from
1 January 2021.

Regardless of which appellate courts are granted the power to
depart from EU case law, we are likely to see the emergence of a
significant body of case law over the coming years in relation to
the interpretation of EU intellectual property laws domestically,
with an inevitable degree of uncertainty arising for litigants as a
result.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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