What does Brexit mean for intellectual property?

For national intellectual property rights covering the UK, the existing systems of protection and enforcement will remain intact on 31 December 2020, irrespective of whether the transition that then takes place is on a 'no deal' or 'onward agreement' basis. This is the case, for example, for the following types of intellectual property right: UK patents and European patents covering the UK; supplementary protection certificates; UK trademarks; UK registered and unregistered design rights; copyright and neighbouring rights; trade secrets; UK plant variety rights, and .co.uk domain registrations.

The UK's address for service rules are changing and some changes to the rules on representation are expected to follow. From 1 January 2021, the rules will not permit an address for service outside the UK, the Channel Islands or Gibraltar in respect of a registered IP right. An address for service in the remaining EU or EEA will no longer be permitted. New applications filed in the UK IPO from 1 January 2021 will need to comply with the new regime. There will be transitional provisions for applications and proceedings that remain pending in the UK IPO on 1 January 2021.

For EU-wide rights obtained or arising under an EU regime, the EU will no longer consider the right to cover the UK or the UK to be within the EU-wide regime. Rights owners will need to be aware of this and to ensure that EU rules about representation continue to be met. This applies for EU trademarks, Community registered designs and unregistered Community design rights.

However, on 31 December 2020 UK legislation will extract from each EU-wide right a UK right of the same scope, which will then be enforceable in the UK courts as a national right. This is the case for EU-trademarks, Community registered designs and unregistered Community design rights. The extraction will be automatic and without a fee, although it will be possible for rights owners to opt out from the creation of a comparable UK right provided certain conditions are met. The changes to the rules on address for service in the UK will only apply to extracted rights from 1 January 2024.

Additionally, a new "supplementary unregistered design right" will be created, so that UK law continues to provide for unregistered design protection equivalent in scope to that presently provided by Community design, in addition to the form of unregistered design right protection that presently arises under UK law. This is because the scope of protection under the UK's existing national unregistered designs regime (which will remain intact on 31 December 2020) is not the same as the scope of protection provided by unregistered Community design right.

Turning to enforcement, unless the position is altered by the terms of an onward agreement between the UK and the EU (reached after the date of publication of this article):

• litigation which is ongoing on 31 December 2020 in UK courts in respect of issues of infringement or validity of an EU-wide right will be restricted in scope to the extracted UK right; likewise, and except for some proceedings in respect of an EU-wide right pending on 31 December 2020, from that date decisions of the EU IPO, and judgments of the CJEU and courts in the remaining (EU27) countries in respect of an EU-wide right will not have effect in the UK in respect of the extracted UK right;
• the present 'Brussels' regime covering service, jurisdiction and enforcement will cease to cover the UK; instead such matters will be governed, from the perspective of the UK courts, by the common law, and from the perspective of courts in EU27 countries, by their own national laws;
• the UK will continue to recognise the existing EEA regional exhaustion scheme in the immediate term, in order to facilitate continuity in respect of parallel imports into the country, but from the perspective of the countries in the remaining single market, the UK will be outside the existing regime such that placing of goods on the market in the UK will not exhaust intellectual property rights in them in the EU; and
• the UK will cease its involvement in the EU-wide customs regime in respect of goods suspected of infringing an intellectual property right; rights owners employing customs registrations as a part of their enforcement strategy will need to file further registrations to maintain coverage for both the UK and EU27 countries.

The UK IPO's summary of key information about how the IP system in the UK will operate from 1 January 2021 is available here.

The UK's relationship with the EU is now governed by the Withdrawal Agreement, an international treaty negotiated by the UK and the EU under Article 50 of the Treaty on European Union.

The Withdrawal Agreement is intended, among other things, to provide a stand-still period in relation to the application of EU law in the UK. Referred to in the Withdrawal Agreement as the 'transition period', and in UK legislation as the 'implementation period', the stand-still is intended to allow for the negotiation of an agreement as to the relationship between the UK and the EU from 31 December 2020 (we refer to this as an "onward agreement").

During the stand-still period, for all intents and purposes there is no change to the application of EU law in the UK. Therefore until 31 December 2020, there will be no change to the regimes for intellectual property protection existing in the UK since before its exit from the EU on 31 January 2020.

The likely future legal relationship between the UK and the EU following the expiry of the stand-still period is difficult to guess. The parties are approaching the negotiations from quite different conceptual positions.

The UK is not seeking an arrangement in which it remains within the EEA after the expiry of the stand-still period, which is expected to occur on 31 December 2020. Nor is the UK seeking to remain within the EU-wide intellectual property regimes for trademarks and designs after 31 December 2020. It therefore seems that any onward agreement will not alter the basic 'no deal' impact of Brexit for intellectual property noted above, which is that from 31 December 2020 the UK will no longer be within the EU's unitary regimes for trademarks or designs, and the UK will automatically extract from each EU-wide intellectual property right a UK right of equivalent scope.

Any onward agreement between the UK and the EU may, however, address areas such as exhaustion and the replacement of the existing 'Brussels' regime (governing service, jurisdiction and enforcement).

Upon the expiry of the stand-still period, and subject to any legislation enacted in order to implement any onward agreement reached with the EU, the status of EU law in the UK will be governed by the European Union (Withdrawal) Act 2018 (EU(W)A 2018) and the European Union (Withdrawal Agreement) Act 2020 (EU(WA)A 2020). The effect of these statutes is to repeal the European Communities Act 1972 (by which EU law took effect in the UK), to incorporate into the law in the UK the acquis (the existing body of EU law) at the expiry of the stand-still period (31 December 2020) to the extent this is possible as 'retained EU law', and to facilitate the making of secondary legislation to supplement UK law where necessary. The legislative mechanisms for achieving this are discussed in our article How Does EU Law Apply in the UK After Brexit?

It is not possible for the UK unilaterally to preserve all of the existing acquis as retained EU law. Unitary EU-wide regimes, such as the EU trademarks regime, the Community designs regimes, mechanisms in areas of law neighbouring copyright, the Customs regime and the 'Brussels' regime governing service, jurisdiction and enforcement, all involve reciprocity of rights and obligations between Member States. So in these areas the UK may only remain within the existing regime if it reaches agreement with the EU to do so; and so UK legislative arrangements do not seek to preserve the UK's involvement. However, the CJEU's jurisprudence on the interpretation of retained EU legislation, for example the meaning of use "in the course of trade" in EU trademark legislation, would form part of the retained EU law.

For the remainder of this article, the expiry of the stand-still period will be presumed to be 31 December 2020.

Until 31 December 2020, the UK remains within the 'single market', which covers the EU and EEA states and Switzerland. In accordance with the principle of free movement of goods and services which is enshrined in the governing treaties, the legislation and case law has developed a doctrine of regional exhaustion. This means that while intellectual property rights may be national in scope, the placing of goods on the market in any EEA country by the owner of the relevant intellectual property, or with their consent, generally exhausts the owner's ability to enforce their intellectual property in those goods to prevent re-sale anywhere in the EEA.

Such 'EEA exhaustion' means that the owner of intellectual property in the EEA may use that intellectual property to prevent import into the EEA of genuine goods placed on the market outside the EEA.

From 31 December 2020, the UK is expected to be outside the single market.

From the perspective of the EU and the other countries remaining in the EEA, the UK will therefore be outside the EEA exhaustion regime. The owner of intellectual property rights covering EU or EEA countries will be able to enforce such rights to prevent import into (and sale within) the EU/EEA of genuine goods placed on the market in the UK. (However, intellectual property rights exhausted before 31 December 2020 would remain exhausted; the change would apply to goods placed on the market in the UK after 31 December 2020). The European Commission's Notice to Stakeholders of 25 June 2020 on the Withdrawal of the United Kingdom and EU Rules in the Field of Exhaustion of Intellectual Property Rights confirms this.

From the perspective of the UK, however, The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019 will maintain the existing exhaustion regime. Placing goods on the market in the UK or the remaining EU/EEA countries will continue to exhaust relevant intellectual property rights in the UK. The UK IPO's Guidance on Exhaustion of IP rights and parallel trade from 1 January 2021 confirms this.

Looking beyond this change, the UK Government is considering all options. It is perhaps notable that there is some history of international exhaustion in the jurisprudence of England and Wales - before the UK's accession to the European Economic Community (the predecessor to the EU), legal tests focused on consent and, in some areas (such as passing off), the case law was very sparse. In 2017, the US Supreme Court introduced a doctrine of international exhaustion in US law (Impression Products, Inc v Lexmark International, Inc 581 U.S. (2017)); in this context an exhaustion regime in the UK that unilaterally confers different treatment upon genuine goods depending on where in the world they were placed on the market seems unlikely to be sustainable, and the law could be further developed by the courts at any time after 31 December 2020 if a longer term regime is not legislated for.

Exhaustion is an area that could, potentially, be impacted by the terms of an onward agreement between the UK and the EU, or between the UK and other countries. We will keep you informed of developments in this area.

We outline below the changes that will occur on 31 December 2020 for the law in respect of patents, supplementary protection certificates, trademarks, designs, copyright and neighbouring rights, geographical indications, plant variety rights, confidential information and trade secrets, and domain name registrations.

In the event that an onward agreement is reached between the UK and the EU, the areas that might, realistically, be impacted by its provisions are noted below.

At present, and in basic terms, there are two systems pursuant to which a patent may be granted covering the UK: the national system, in which an application is made to the UK Intellectual Property Office (UK IPO); and the European system, pursuant to which an application is made to the European Patent Office (EPO). Either system may be preceded by, or may provide the receiving office for, an application under the international system.

For national patents and (post-grant) for UK designations of European patents, questions of infringement and validity are matters for the courts of the UK (for European patents the EPO additionally has a remit to hear post-grant oppositions filed within the first nine months of grant and centralised applications by the proprietor for amendment or revocation). Both systems are governed by national and international law and are very largely outside the remit of EU law.

Both the national and European patent systems will therefore be largely unaffected by the expiry of the stand-still period, whether or not a deal is reached between the UK and the EU. Necessary amendments to UK national legislation have been enacted in the form of The Patents (Amendment) (EU Exit) Regulations 2019. In the limited contexts in which the EU has legislated, most notably the Biotechnology Directive (no. 98/44) and the IP Enforcement Directive (no. 2004/48), necessary implementation into the UK's national law has already taken place and following the expiry of the stand-still period will be preserved as retained EU law. Notably, the UK will remain a member of the Paris Convention, which underpins the priority filing system around the world.

UK patent attorneys', solicitors' and barristers' entitlement to represent their clients before/in proceedings in the EPO will continue following the expiry of the stand-still period, irrespective of whether a deal is reached between the UK and the EU. The EPO's commentary on the UK's withdrawal from the EU having no impact on its status within the European Patent Organisation is contained in the EPO's Notice of 29 January 2020 on the UK's withdrawal from the EU.

Presently, UK law permits, and in some circumstances requires, the provision of an address for service in respect of a patent covering the UK. Such an address may be in the UK, an EU/EEA state or the Channel Islands (see the Patents Rules 2007, rules 103-104). The 'Recast Brussels Regulation' (1215/2012) governs issues of service, jurisdiction and enforcement of judgments between EU member states, and by extension (through the Lugano Convention), with EEA states. Without an agreed replacement for this system, in the UK following the expiry of the stand-still period the permission of the court will be required for the service of proceedings in the remaining EU/EEA states in respect of a patent or application covering the UK.

In this context, the UK's address for service rules are changing. From 1 January 2021, the rules will not permit the provision of an address for service outside the UK, the Channel Islands or Gibraltar in respect of a UK patent (GB or EP(UK)) or an application in the UK IPO. The provision of an address for service in the remaining EU or EEA will no longer be permitted. New patent applications filed in the UK IPO from 1 January 2020 will need to comply with the new regime. There will be transitional provisions for applications and proceedings that remain pending on 1 January 2021. The legislative amendments are contained in The Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020 (SI 2020/1317). The UK IPO's guidance on address for service for intellectual property rights from 1 January 2021 is available here.

In July 2020, the UK Government withdrew its ratification of the 2013 Agreement on a Unified Patent Court. Accordingly, if and when the proposed Unified Patent Court and unitary patent system does become operational, the UK will not be a participant, at least in the immediate term.

What patent owners can do now

No steps need to be taken by patent owners to prepare for the expiry of the stand-still period.

A supplementary protection certificate (SPC) is a form of intellectual property that extends patent term in respect of medicinal or plant protection products in qualifying circumstances. The maximum duration of an SPC is five years, which is intended to compensate, to some degree, for the period elapsing between the filing of an application for a patent for a new medicinal or plant protection product and the grant of authorisation to place the medicinal product or plant protection product on the market. The term of SPC protection in respect of a medicinal product may be extended by six months (a 'paediatric extension') if certain criteria are satisfied.

For EU member states, including the UK, SPCs are granted at the national level by the relevant office (for the UK, the UK IPO) pursuant to the relevant EU regulation(s) and national implementing legislation. Questions of infringement and validity of a UK SPC are matters for the courts of the UK. In July 2019, a new EU regulation (2019/933) amended the regulation governing SPCs for medicinal products (469/2009) to introduce a 'manufacturing waiver'. This permits EU-based (which presently includes UK-based) entities to manufacture generic and biosimilar versions of medicines the subject of an SPC without infringing the SPC, where (i) the manufacture is for export, or (ii) the manufacture is in the final six months of the term of the SPC and the purpose is to store the product (in the Member State of manufacture) for placing on the market upon expiry of the SPC.

As SPCs are national rights, the expiry of the stand-still period on 31 December 2020 will not impact existing SPCs, whether or not a deal is reached between the UK and the EU.

The present regime will also continue to apply for applications for SPCs that are pending in the UK upon the expiry of the stand-still period - this is provided for in Article 60 of the Withdrawal Agreement.

Following expiry of the stand-still period, the existing regime will remain in place in the UK, with some adjustments. From 1 January 2021, for an SPC to be sought in the UK, the relevant product must have marketing authorisation in the UK. However, the term of SPC protection will continue to be calculated by reference to the date of the first authorisation to place the product on the market in the area comprising the EEA and the UK. Paediatric extensions will be governed by the Human Medicines Regulations 2012 (as amended by The Human Medicines (Amendment etc.) (EU Exit) Regulations 2019) rather than EU regulation but with essentially the same effect for SPCs.

The necessary adjustments to national legislation governing SPCs (prior to the EU manufacturing waiver regulation coming into force) were enacted in the form of The Patents (Amendment) (EU Exit) Regulations 2019 (SI 2020/801). Amendments to national law to provide, upon the expiry of the stand-still period, for a manufacturing waiver that is consistent with that established by Regulation 2019/933 (i.e. applying to manufacture for export to countries outside the UK, the Isle of Man or one or more Member States of the EU and, in the last six months of the SPC term, to manufacture for storing in the UK) are contained in The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (SI 2020/1050).

SPC law is an area in which UK judges have repeatedly sought clarification from the CJEU, both on the interpretation of relevant EU legislation and on the meaning of the CJEU's earlier judgments, and strain between the EU legislation governing SPCs and international norms in patent law have long been apparent in the case law. A significant practical consequence of the 31 December 2020 transition for SPCs will therefore be that in the context of litigation concerning SPCs, references to the CJEU will no longer be possible from UK courts. The UK Supreme Court will be the final court of appeal on the interpretation of retained EU law regarding SPCs (unless there is onward agreement to the contrary). SPC law is therefore an area in which UK jurisprudence might diverge from that of the CJEU in the relatively short term following the 31 December 2020 transition. In the medium term, patent term extension is also an area in which the UK legislature might consider alternative models.

What SPC owners can do now

No steps need to be taken by the owners of existing SPCs to prepare for the expiry of the stand-still period. For patent owners preparing to apply for an SPC from 1 January 2021 onwards, in accordance with the changes noted above, an appropriate marketing authorisation covering the UK will need to be relied upon.

The tort of passing off may protect goodwill attached to goods or services in the UK, in the event of misrepresentation leading or likely to lead the public to believe that the goods or services offered are the goods or services of the claimant, or there is some other authorised link, and the claimant suffers damage as a result[1]. The law of passing off is outside the remit of EU law. It is a cause of action, operating as a sort of unregistered right, which is confined to UK activity, and so will not be impacted by the 31 December 2020 transition.

At present, there are two systems pursuant to which a registered trademark may be granted covering the UK: the UK national system, under which an application is made to the UK IPO for a UK trademark (UKTM); and the EU system, under which an application is made to the EU Intellectual Property Office (EUIPO) for an EU trademark (EUTM). According to the Withdrawal Agreement (article 127) the UK remains within the EU system until the expiry of the stand-still period. Either type of registration may alternatively be sought by designating the UK or the EU in an international registration under the Madrid system.

The UK national registered trademark system is governed by the Trade Marks Act 1994 (as amended) - which is framed so as to comply with harmonising EU-wide legislation.

Consequently, the impact of the 31 December 2020 transition for the existing national registered trademark system in the immediate term will be minimal. Necessary changes to national legislation have been enacted in the form of the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019/269) (Schedule 3).

The most notable change is that an EU trademark will no longer count as an 'earlier trade mark' for the purposes of relative grounds for refusal of registration or invalidity. However, each EUTM existing on 31 December 2020 will be treated as a UKTM by the UKIPO for these purposes for as long as the extracted UK registration remains in force, and so in practice the proportion of all EUTMs that count as an 'earlier trade mark' in the UK will merely decrease over time.

From 1 January 2020, an address for service in the UK, the Channel Islands or Gibraltar must be provided for new applications for a UK trademark. (For more on changes to the UK's address for service rules, please see below). Additionally, the UK Government may legislate to restrict representation in the UK IPO to UK qualified attorneys.

In the medium term, while the UK is outside the EU, there is potential for some legislative divergence between the UK trademark system and the EU system, although in the context of the widespread international alignment of trademark systems this is expected to be minimal. Although much CJEU jurisprudence is likely to remain persuasive, trademark law is an area in which the courts in the UK have at times struggled to reconcile the guidance of the CJEU with the terms of the relevant legislation, as exemplified by the judgments of Arnold J in Nestlé v Cadbury [2016] EWHC 50 (Ch), Supreme Petfoods v Henry Bell & Co [2015] EWHC 256 (Ch) and Sky v Skykick [2018] EWHC 155 (Ch). There will, therefore, be scope for the UK national system to steer a different course on some issues, once it is no longer subject to EU harmonising legislation and the CJEU.

The EU trademark system enables the registration of an EUTM, which is a unitary right covering the EU (and which, until 31 December 2020, includes the UK). It may be enforced or challenged for the whole of the EU (and, presently, the UK) in a single court action. The system is governed by EU Regulation 2017/2001 and predecessor regulations.

Upon the expiry of the stand-still period, the UK will cease its participation in the EUTM system. The EU will no longer consider EUTMs to cover the UK or the UK to be within the EUTM system. Right owners will need to be aware of this and to ensure that EU rules about representation continue to be met. The Withdrawal Agreement (articles 90-97) provides that UK legal representatives can continue to represent their clients before the EUIPO (and the Court of Justice) in procedures that are ongoing upon the expiry of the stand-still period. Aside from this, anyone may continue to file an application for registration of an EUTM. However, where representation is necessary, natural or legal persons without domicile in the EEA or without their principle place of business or a real and effective commercial establishment in the EEA must be represented in the EUIPO in accordance with Article 120(1) of Regulation 2017/1001. The EUIPO's recent communications to stakeholders on the impact of Brexit on the EU trademark system are available here.

In the UK, however, the Withdrawal Agreement (Title IV) and The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019/269) (Schedule 1) will mitigate the effects of the UK leaving the EUTM system. On 31 December 2020, the UK will 'extract' from each existing EUTM a UK right of the same scope (a 'comparable UK trade mark (EU)'), which will then be enforceable in the UK courts as a national right. The extraction will be automatic and without any fee (although right owners may opt out provided certain conditions are met).

A comparable UK trade mark (EU) will maintain the priority and seniority of the existing EUTM. It will not be liable to revocation on the ground that the corresponding EUTM had not been put into genuine use in the UK before the end of the stand-still period. Where the existing EUTM has a 'reputation' in the EU at the date of the extraction of the comparable UK trade mark (EU), the proprietor will be entitled to rely upon that reputation in the UK, but thereafter the reputation of the comparable UK trade mark (EU) will be based on use in the UK.

Each comparable UK trade mark (EU) will retain the renewal date of the existing EUTM and will be subject to renewal formalities and fees as a UKTM would be for that renewal date. However, for comparable UK trade marks (EU) with a renewal date falling in the six months immediately following 1 January 2021 (i.e. until 30 June 2021), a renewal reminder will only be sent on the actual date of expiry and the trademark owner will then have six months to renew the comparable UK trade mark (EU). Early payment in the EUIPO before 1 January 2021 will have no effect in respect of the extracted UK registration.

The owner of an application for an EUTM that remains pending on 31 December 2020 will have nine months in which to file a UK application for the same trademark, in respect of some or all of the same goods and services, maintaining the benefit of the same filing, priority and seniority dates. The UK will not extract automatically a UK application from a pending application for an EUTM.

The UK IPO's detailed Guidance on EU trade mark protection and comparable UK trade marks from 1 January 2021 is available here.

For international trademarks that are protected in the EU upon the expiry of the stand-still period, similar provision is made by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019/638) (Schedule 4). A UK right of the same scope will be extracted (a 'comparable UK trade mark (IR)'). The owner of an application for an international trademark or a request for an EU extension that is pending on 31 December 2020 or filed after that date will have nine months to file a UK application for the same trademark, in respect some or all of the same goods and services, maintaining the benefit of the same filing and priority dates as the international filing. The UK IPO's detailed Guidance on Changes to international trade mark registrations after 1 January 2021 is available here.

Licences existing on 31 December 2020 authorising acts in the UK which would otherwise infringe an existing EUTM or international registration will, subject to agreement to the contrary, continue after the expiry of the stand-still period to authorise such acts in respect of the extracted comparable UK trade mark (EU) or comparable UK trade mark (IR).

Proceedings in the UK courts pending on exit day concerning the validity or infringement of an existing EUTM will become proceedings concerned with the daughter comparable UK trade mark (EU).

Presently, UK law permits, and in some circumstances requires, the provision of an address for service in respect of a UK trademark. Such an address may be in the UK, an EU/EEA state or the Channel Islands (see The Trade Marks Rules 2008, rules 11-12). The 'Recast Brussels Regulation' (1215/2012) presently governs issues of service, jurisdiction and enforcement of judgments between EU member states, and by extension (through the Lugano Convention), with EEA states. Without an agreed replacement for this system, in the UK following the expiry of the stand-still period the permission of the court will be required for the service of proceedings in the remaining EU/EEA states in respect of a trademark or application covering the UK.

In this context, the UK's address for service rules are changing and changes to the rules on representation are expected to follow. From 1 January 2021, the rules will not permit the provision of an address for service outside the UK, the Channel Islands or Gibraltar in respect of a UK trademark or application. The provision of an address for service in the remaining EU or EEA will no longer be permitted. New trade mark applications filed in the UK IPO from 1 January 2021 will need to comply with the new regime. There will be transitional provisions for applications and proceedings that remain pending on 1 January 2021, and the changes will not apply to comparable UK trade marks (EU) (ie those extracted from an EUTM) until 2024. The legislative amendments are contained in The Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020 (SI 2020/1317). The UK IPO's guidance on address for service for intellectual property rights from 1 January 2021 is available here.

There is no indication that the terms of an onward agreement between the UK and the EU would alter anything expressed in this section 6.3.

What trademark owners can do now

Brand owners should now identify their EUTMs and international trademarks designating the EU with a renewal date falling between 1 January and 30 June 2021, and be ready to renew the extracted UK registrations in the UK IPO following the renewal date. Any payment of the renewal fee for the existing EUTM in the EUIPO  made before 1 January 2021 will not count as a payment in respect of the extracted UK right.

For EUTMs with renewals falling due on or before 31 December 2021, timely payment should be made in the EUIPO and care taken to ensure that records are up to date before 31 December 2021.

Brand owners should also identify their pending applications for EUTMs, and for those which do not become registered by 31 December 2021, be prepared to file an application in the UK for the same mark in respect of some or all of the same goods and services by 30 September 2021, in order to ensure protection is obtained in the UK.

Applicants seeking new trademark protection for the UK should apply for a UK national trademark, irrespective of whether and how protection is now sought for remaining EU and EEA states.

At present, designs may be protected in the UK in registered and unregistered forms pursuant to national systems and EU-wide ('Community') systems. According to the Withdrawal Agreement (article 127), the UK remains within the EU systems until the expiry of the stand-still period. The UK and EU registered design systems are also accessible via an international application under the Hague System.

The UK national registered system is governed by the Registered Designs Act 1949 and associated legislation, which has been amended over the years to factor in various EU harmonising changes. An application for a registered design covering the UK may be made to the UK IPO. A UK registered design has a term of 25 years from filing, provided renewal fees are paid. It protects the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation. Subject to development in the address for service rules (noted below), the UK national registered designs system will not be impacted by the 31 December 2020 transition.

The UK unregistered design right system is governed by the Copyright Designs and Patents Act 1988. An unregistered design right (UK UDR) covering the UK arises automatically in qualifying circumstances. It protects the shape or configuration of the whole or part of an article and lasts for (the shorter of) ten years from first sale or 15 years from first creation (dates calculated from the end of the relevant calendar year). In either case, the final five years of protection are subject to licence of right requirements. Upon the expiry of the stand-still period, the UK UDR system may be open to a narrower group of designers. This is because The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019/638) (Schedule 8) will adjust the qualification criteria for UK UDR, which will no longer be satisfied by habitual residence or a place of business in an EU27 country, or by first marketing in an EU27 country. Unregistered design protection was an area in which the UK sought to reach agreement with the EU, for protection to arise across the UK and the EU following disclosure in either, as exemplified by the draft UK-EU Comprehensive Free Trade Agreement published by the UK in early 2020 (draft CFTA, article 24.28). Such an approach could potentially be taken into trade agreements with other countries in the future. The UK IPO's guidance on changes to UK UDR is available here.

The EU-wide regimes for registered and unregistered design protection are governed by EU Regulation 6/2002 and Implementing Regulation 2245/2002. An application for a registered Community design (RCD) may be made to the EUIPO; an unregistered Community design right (CDR) arises automatically where qualification requirements are met. Like the UK registered design system, both forms of Community right protect the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation. Both may be enforced or challenged for the whole EU in a single court action (depending on where the defendant is based). An RCD has a term of 25 years, provided renewal fees are paid, whereas a CDR lasts for three years from the point the design is first disclosed or made available to the public within the Community in some manner (provided it has not already been disclosed outside the Community).

Upon the expiry of the stand-still period, the UK will cease its participation in both the unregistered and registered Community design systems. The EU will no longer consider RCDs or CDRs to cover the UK or the UK to be within the relevant system, and the UK will create equivalent rights as explained below.

RCD owners will need to be aware of this and to ensure that EU rules about representation continue to be met. The Withdrawal Agreement (articles 90-97) provides that UK legal representatives can continue to represent their clients before the EUIPO (and the Court of Justice) in procedures that are ongoing upon the expiry of the stand-still period. Aside from this, natural persons domiciled outside the EU27 and legal persons without a place of business within the EU must be represented before the EUIPO in accordance with article 78 of Regulation 6/2002. The EUIPO's recent communications to stakeholders on the impact of Brexit on the Community design systems are available here.

In the UK, however, the Withdrawal Agreement (Title IV) and The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019/638) will mitigate the effects of the UK leaving the Community designs systems.

On 31 December 2020, the UK will 'extract' from each existing RCD a UK right of the same scope (a 're-registered design'), which will then be enforceable and challengeable in the UK courts as a national right. The extraction will be automatic and without any fee (although right owners could request to opt out, from 1 January 2021, if certain conditions were met). Each re-registered design will maintain the application and registration dates of, and the same claim of priority as, its parent existing RCD. Each re-registered design will retain the renewal date of the existing RCD and will be subject to renewal formalities and fees as a UK registered design would be for that renewal date. However, for re-registered designs with a renewal date falling in the six months immediately following 1 January 2021, (i.e. until 30 June 2021), a renewal notice will be sent on the actual date of expiry and the re-registered design owner will then have six months to renew the right. Early payment in the EUIPO before 1 January 2021 in respect of the RCD will have no effect in respect of the extracted re-registered design.

The owner of an application for an RCD that remains pending in the EUIPO on 31 December 2020 will have nine months in which to apply in the UK IPO to register the same design, retaining the earlier filing date of the pending RCD. The UK will not extract automatically a UK application from a pending application for an RCD.

The UK IPO's detailed Guidance on the changes for RCDs (and re-registered designs) is available here.

On 31 December 2020 the UK will 'extract' from each existing CDR a 'continuing unregistered Community design', which will then be enforceable and challengeable in the UK courts as a national right. A continuing unregistered Community design will continue to protect the "appearance of the whole or part of a product…" (i.e. mirroring the protection provided by the registered designs systems) rather than the "shape or configuration…of the whole or part of an article…" (as is protected by UK UDR).

In addition, from the expiry of the stand-still period, a new form of national unregistered design right protection will be provided for under UK law to protect new designs first disclosed after 1 January 2021: for qualifying designs 'supplementary unregistered design' will arise in order to continue protecting "the appearance of the whole or part of a product…" (which lasts for three years) in parallel with the protection that arises in the form of a UK UDR (which lasts for 10-15 years). Qualification by first marketing can be expected to be limited in its territorial reach to the countries included within the UK UDR regime, which will not include the remaining EU27/EEA countries. The UK IPO's guidance on changes to unregistered designs, including supplementary unregistered design, is available here.

The EUIPO has stated that within the remaining EU27/EEA states, a design disclosed in the UK before the end of the stand-still period will continue to benefit from CDR in the remaining EU27/EEA (see the EUIPO General Additional Guidance on the UK withdrawal agreement here (question 28)).

For international registrations designating the EU (international (EU) designs) existing upon the expiry of the stand-still period, a UK right of the same scope will be extracted (a 're-registered international design') i.e. just as a re-registered design will be extracted from an RCD. The owner of an application for an international (EU) design that is pending on 31 December 2020 will have nine months in which to apply in the UK IPO to register the same design, retaining the earlier filing and priority dates of the international registration. The UK will not extract automatically a UK application from a pending application for an international (EU) design. The UK is a member of the Hague Agreement for the International Registration of industrial designs, allowing the UK to be a designated state. Accordingly, after the expiry of the stand-still period, the UK registered designs system will continue to be accessible via an international application under the Hague System. The UK IPO's detailed guidance on international (EU) designs after 1 January 2021 is available here.

Licences existing on 31 December 2020 authorising acts in the UK which would otherwise infringe an existing RCD or international (EU) design, subject to agreement to the contrary, continue after that date to authorise such acts in respect of the extracted re-registered design or re-registered international design.

Proceedings in the UK courts pending on exit day concerning the validity or infringement of an existing RCD, international (EU) design or CDR will become proceedings concerned with the extracted right.

Presently, UK law permits, and in some circumstances requires, the provision of an address for service in respect of a UK registered design right and UK UDR. Such an address may be in the UK, an EU/EEA state or the Channel Islands (see rules 42-43 of the Registered Design Rules 2006 and rule 23 and Schedule 1 of the Design Right (Proceedings before Comptroller) Rules 1989). The 'Recast Brussels Regulation' (1215/2012) presently governs issues of service, jurisdiction and enforcement of judgments between EU member states, and by extension (through the Lugano Convention), with EEA states. Without an agreed replacement for this system, in the UK following the expiry of the stand-still period the permission of the court will be required for the service of proceedings in the remaining EU/EEA states in respect of a trademark or application covering the UK.

In this context, the UK's address for service rules are changing and changes to the rules on representation are expected to follow. From 1 January 2021, the rules will not permit the provision of an address for service outside the UK, the Channel Islands or Gibraltar in respect of a UK registered design or application. The provision of an address for service in the remaining EU or EEA will no longer be permitted. New applications for a registered design filed in the UK IPO from 1 January 2021 will need to comply with the new regime. There will be transitional provisions for applications and proceedings that remain pending on 1 January 2021, and the changes will not apply to re-registered designs (ie those extracted from a Registered Community Design) until 2024. The legislative amendments are contained in The Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020 (SI 2020/1317). The UK IPO's guidance on address for service for intellectual property rights from 1 January 2021 is available here.

What design owners can do now

The most urgent task to do now is to identify those designs that will be first disclosed after 1 January 2021. With an eye on the unregistered design protection that would arise, disclosure in the UK or in the EU27 may be the best approach, but designers should be aware that, as it stands, unregistered protection may only be available in one or other of these. In some circumstances it might, for example, be possible simultaneously for UDR to arise for the UK and CDR to arise for EU27, but the scope of these rights is slightly different. Protection of the same scope as is presently afforded across the UK and the EU27 in the form of CDR will, however, continue to be available for both the UK and the EU where applications are filed for registered protection. Very careful thought is therefore required (and we also recommend that professional advice is taken) on how best to secure protection for designs that will first be disclosed after 31 December 2020.

Design owners should now identify their RCDs and international (EU) designs with a renewal date falling between 1 January and 30 June 2021, and be ready to renew the extracted UK registrations in the UK IPO following the renewal date. Payment of the renewal fee for the existing EU-wide right in the EUIPO should simply be made when due but, if the renewal date falls after 1 January 2021, a separate renewal will be due for the extracted UK design.

For RCDs and international (EU) designs with renewals falling due on or before 31 December 2021, timely payment should be made in the EUIPO and care taken to ensure that records are up to date before 31 December 2021.

Design owners should also identify their pending applications for RCDs, and for those which do not become registered by 31 December 2021, be prepared to file an application in the UK for the same design, by 30 September 2021, in order to ensure protection is obtained in the UK.

Applicants seeking new design protection for the UK should apply now for a UK registered design, irrespective of whether and how protection is sought for remaining EU and EEA states.

Copyright and related rights are governed in the UK by the Copyright Designs and Patents Act 1988 (CDPA), which has been framed so as to give effect to the terms of international treaties, for example the Berne Convention of 1886.

For the more traditional forms of copyright protection, provided a work qualifies by its author's nationality or domicile or by the place of first publication, protection arises automatically upon recordal in writing or some other form, and may subsist in original works in any of the protected categories: literary, dramatic, musical and artistic works, sound recordings, films, broadcasts and typographical arrangements of published editions.

At present, in basic terms, there is no unitary copyright protection in the EU. However, the EU has legislated in multiple different Directives and Regulations[2] so as to harmonise aspects of the law relating to copyright. National legislation has been updated accordingly and the UK courts' interpretation of aspects of national legislation has similarly evolved to reflect CJEU rulings in respect of harmonising European legislation. This will remain in UK law upon the expiry of the stand-still period as retained EU law. However the UK Government has indicated that it will not implement the changes required in the national law of EU Member States (by 7 June 2021) by the Directive on copyright in the digital single market (2019/790). The directive includes, among other things, provisions requiring larger "online content-sharing service providers" to obtain authorisation (i.e. a licence) from rightholders (for example, online newspapers) to give public access to uploaded content.

Upon the expiry of the stand-still period, amendments to copyright legislation in the UK will take effect, which have been enacted in the form of The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (SI 2019/605). These changes remove from the governing national legislation many of the references to the EU or EEA which would otherwise confer preferential treatment for the EU or EEA after the expiry of the stand-still period and which, without agreement to the contrary between the UK and the EU27, would not be reciprocated. However, in practice this will make no difference to the operation of the existing regime in respect of the more traditional forms of copyright protection. This is because international treaties (for example the Berne Convention and the TRIPS Agreement) require all treaty countries to protect works originating in any other treaty country to a minimum standard. The UK has ratified the relevant treaties independently of its relationship with the EU; and the EU/EEA countries are participants in the international regimes also.

Turning to the rights 'neighbouring' copyright, this is an area in which the EU has legislated for some reciprocal cross-border mechanisms. The UK remains within the EU mechanisms until the expiry of the stand-still period (pursuant to the Withdrawal Agreement article 127) but following the 31 December 2020 transition the UK will cease to participate in the relevant regime (unless onward agreement to the contrary is reached between the UK and the EU). For the UK, amendments to national legislation to take effect from the expiry of the stand-still period have been enacted in The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (SI 2019/605). In the bulleted paragraphs below, we explain the arrangements in respect of the cross-border mechanisms identified:

• The EU-wide regime provided by the Portability Regulation 2017/1128. The regime allows consumers across the EU and the EEA to access online content services (such as video-on-demand streaming services) that they have subscribed to at home wherever they are in the EU. On 31 December 2020, the Portability Regulation will be repealed in the UK. Online content service providers will not be obliged, or able, under UK legislation to offer cross-border portability for customers temporarily travelling to or from the UK: such arrangements will be dependent upon commercial arrangements being reached between online content providers and the owners of the content they provide. The UK IPO's guidance on cross-border portability of online content services from 1 January 2021 is available here.
• The EU-wide regime for sui generis database protection provided by Database Directive 96/9. Under this regime, sui generis database protection covering the EU arises where there has been a substantial investment in obtaining, verifying or presenting the content of a database. Following the 31 December 2020 transition, the Withdrawal Agreement Title IV (article 58) provides that existing sui generis database rights will continue to be protected in the UK for beneficiaries who are nationals of the UK, natural persons with a habitual residence in the UK or undertakings established in the UK. In fact, pursuant to The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (SI 2019/605) (regulation 38), the UK will also continue to recognise sui generis database rights that exist upon the expiry of the stand-still period irrespective of whether qualification was by reference to the UK or another EU/EEA state. It is unclear, however, whether sui generis protection that arises before 31 December 2020 as a result of UK nationality, residence or establishment will continue, after 31 December 2020, to be recognised as conferring protection in the remaining EU27/EEA states. Relevant guidance in this area is contained in the European Commission's 23 June 2020 notice to stakeholders; and an earlier notice from the Commission, dated 28 March 2018. For databases completed after 31 December 2020, sui generis protection, where it arises, will be: under UK law to cover the UK (subject to UK nationality, residence or establishment criteria being met); and under EU law to cover the remaining EU27 states (subject to requirements being met as to nationality, residence or establishment in an EU Member State).
• The EU-wide copyright clearance regime provided by the Satellite and Cable Directive 93/83. This enables satellite broadcasters to transmit copyright works from one EU/EEA country to another having only cleared copyright in the country of origin. Following the 31 December 2020 transition, in the UK, the country of origin principle will continue to be applied to broadcasts from any country. For UK broadcasters, whether permission will need to be obtained from rightholders for EU/EEA states (in addition to the permission obtained for the UK) will depend upon the domestic legislation of each relevant state. The UK IPO's guidance on copyright clearance for satellite broadcasting from 1 January 2021 is available here.
• The EU-wide freedom of movement of services provisions presently applicable to the use in the UK of satellite decoder devices intended for other EU Member States. Following the 31 December 2020 transition, the use in the UK of decoder devices intended for use in a remaining EU27 state (or another country), in order to access a programme included in a broadcast made from the UK with the intent of avoiding a charge associated with the programme, will become an offence. The UK IPO's guidance on use of satellite decoder cards intended for EU audiences from 1 January 2021 is available here.
• The EU/EEA-wide collective rights management regime provided by Directive 2014/26. This regime requires collective rights management organisations (CROs) to represent, on request, rightholders of any EEA member state. Following the 31 December 2020 transition, existing obligations on UK CROs will be maintained: CMOs that offer multi-territorial licensing of online rights in musical works will continue to be required to represent on request the catalogue of other CMOs (UK or EEA) for multi-territorial licensing purposes. Whether CMOs in remaining EU27 and EEA states will be required to represent on request UK rightholders and CMOs will depend upon domestic law in the individual countries. The UK IPO's guidance on collective rights management from 1 January 2021 is available here.
• The EU/EEA-wide licensing of orphan works regime provided by Directive 2012/28. Orphan works are copyright works for which the right holder is not known or cannot be found. The EU/EEA regime provides an exception to copyright infringement that allows cultural heritage institutions, such as libraries, archives and museums, to digitise and make orphan works available online across all EU and EEA member states without the permission of the rightholder. Following the 31 December 2020 transition, UK cultural heritage institutions will need to remove orphan works placed online in reliance upon the EU/EEA-wide regime, consider whether to seek a licence under the UK's orphan works licensing scheme, and for licensed works within the UK's regime consider whether online access should be restricted to avoid copyright infringement in the EEA. The UK IPO's guidance on orphan works and cultural heritage institutions: copyright from 1 January 2021 is available here.

Finally in this section, it is noted that the Marrakesh Treaty is an international agreement to improve the access of visually impaired people to copyright works around the world by allowing the making, distribution, and transfer between Treaty countries of accessible format copies of copyright works (e.g. braille copies of books). The UK's ratification of the Marrakesh Treaty is presently achieved through its membership of the EU. The UK Government has indicated intent to ratify the Marrakesh Treaty independently of the EU by 1 January 2021: if this is achieved, the existing regime will continue upon the expiry of the standstill period; if it is not achieved, there will be a time period in which cross-border exchange of accessible format copies of works may be affected, although other aspects of the existing EU-wide regime will be preserved in the UK as retained EU law. The UK IPO's guidance on access to copyright works for visually impaired people from 1 January 2021 is available here.

In the medium term, without a broad negotiated arrangement applying in respect of copyright and neighbouring rights, the UK's withdrawal from the EU is likely to lead to some divergence in their respective legislative regimes. This is because the EU is progressing the development of its regulation of copyright law and, without the UK to negotiate with, EU regulation is likely to more rigorously harmonise certain concepts and areas considered important in some continental European legal systems, for example in respect of moral rights and author-publisher contracts. Copyright law is, however, broadly harmonised at an international level by treaty obligations that will continue to shape the structure of copyright law in the UK.

A number of EU regulations operate to enable a range of protection for specialist agricultural, food and drink product names in the EU:

• A protected designation of origin (PDO) protects product names that have the strongest link to the place in which the product is made because the qualities or characteristics of the product are exclusively due to a particular geographical environment occurring in that area;
• A protected geographical indication (PGI) protects the name of a region, place or country used to describe a foodstuff or agricultural product which possesses a specific quality or characteristic attributable to that area, and for which the production, processing or preparation takes place in that area; and
• A traditional speciality guaranteed (TSG) protects a traditional name and characteristics that distinguish a product from other similar products, but which are not due to the area in which the product is made nor based purely on technical advances used in production.

PDOs and PGIs are collectively referred to as 'GIs' (although the term is also used more loosely to include TSGs) and are governed, principally, by Regulation 1151/2012. GIs may be sought by a relevant industry or market group in a two stage process. The first stage involves applying to the relevant Member State (for the UK, the Department for Environment, Food & Rural Affairs (Defra)); the second stage involves an application to the European Commission. Once registered, GIs may be enforced against third parties by the relevant national authority (for the UK, National Trading Standards) or by a relevant industry group. The EU is also a participant in the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, which provides an international registration system for GIs. Until the expiry of the stand-still period, the UK remains within the EU regimes for the protection of agricultural, food and drink product names (pursuant to the Withdrawal Agreement article 127).

On 31 December 2020, the UK will cease participation in the EU regimes. The Withdrawal Agreement (article 54(2)) provides that the UK will continue to protect existing PDOs, PGIs and TSGs, at least to the same level of protection under the law of the UK as presently exists under a number of identified provisions of EU law. The provisions concerned include the absolute grounds for refusal or invalidity of a trademark or a wine grape variety in respect of GIs (Directive 2015/2436 article 4(1)(i)-(k), Regulation 1151/2012 article 14(1), Regulation 1308/2013 articles 100(3), 102(1), Regulation No 110/2008 article 23(1)), provisions protecting against misuse of a GI (Regulation 1151/2012 articles 13, 38, 44, 45(1)(b), Regulation 1308/2013 article 103, 113, Regulation No 110/2008 article 15(3), 16), and provisions conferring obligations on Member States to monitor and ensure that products comply with the corresponding product specification, and sales descriptions used do not give rise to confusion with names that are registered (Regulation 1151/2012 articles 24, 36(3), Regulation 1306/2013 article 90(1)), Regulation No 110/2008 article 15(3)).

Further, the Withdrawal Agreement's Protocol on Ireland/Northern Ireland provides for certain provisions of EU law to continue to apply in the UK in respect of Northern Ireland, including some legislation relating to GIs.

Any PDO, PGI or TSG granted in accordance with EU law on geographical indications and existing on 31 December 2020 should remain protected in the EU after 31 December 2020 - the Commission has stated that this is the case (see the European Commission's 6 July 2020 notice to stakeholders on the withdrawal of the UK and EU rules in the field of geographical indications is available here).

The UK has announced that it will set up its own geographical indications scheme to fulfil its World Trade Organisation obligations from 1 January 2021. The scheme will protect the geographical names of food, drink and agricultural products and will use the PDO, PGI and TSG designations. The scheme will be open to producers from the UK and other countries. All UK products registered under the EU's GI schemes on 31 December 2020 will remain protected under the new UK schemes following the 31 December 2020 transition. Similarly, existing GIs that can be produced anywhere on the island of Ireland will also continue to be fully protected in the UK. For UK producers seeking to register a new GI from 1 January 2021, an application will need to be made to Defra for protection in Great Britain. After securing protection for Great Britain, UK producers will then be able to apply to the EU schemes as applicants from a third country. Producers in Northern Ireland, however, will be able to apply to the EU scheme directly, without first securing protection under the UK scheme. Defra's guidance on protecting food and drink names from 1 January 2021 is available here.

The UK has not indicated how it plans to give effect to the provisions of the Withdrawal Agreement (article 54(2)) noted above in respect of GIs existing at the expiry of the stand-still period for products from remaining EU27 states. The Commission has noted (in its 6 July 2020 notice to stakeholders linked above) that the Withdrawal Agreement "provides for continued protection in the United Kingdom of the stock of geographical indications registered in the EU at the end of the transition period", which is to be without any administration procedure or fee. However, the UK Government's position, as published in February 2020, is that:

"72. There are different ways of proceeding on Geographical Indications (GIs) and the UK will keep its approach under review as negotiations with the EU and other trading partners progress. Any agreement on GIs must respect the rights of both parties to set their own rules on GIs and the future directions of their respective schemes."

The UK Government's Draft UK-EU Comprehensive Free Trade Agreement included a draft article 24.25, stating:

"The provisions of this subsection shall supersede Article 54(2) of the Withdrawal Agreement.
[Further text on the provisions of this sub-section to be proposed]."

Geographical indications is therefore an area which may be impacted by any onward agreement reached between the UK and the EU.

What GI owners can do now

Owners of existing GIs, and those with applications pending, will need to remain alert to developments in this area. Existing GIs should continue to be useable and enforceable in the UK and the remaining EU27/EEA following the 31 December 2020 transition.

For UK-based organisations considering applying for a new GI, the first stage of registration is, and will continue to be, an application made to Defra.

At present, there are two systems pursuant to which a plant variety right may be granted covering the UK, for a new, distinct, uniform and stable plant variety: the UK national system, under which an application is made to the UK Plant Variety Rights Office; and the EU system (governed by EU Regulation 2100/94), under which an application is made to the Community Plant Variety Rights Office. Until the expiry of the stand-still period, the UK remains within the EU regime (pursuant to the Withdrawal Agreement article 127).

The UK national system is governed by the Plant Varieties Act 1997. It will not be impacted by the 31 December 2020 transition.

However, on 31 December 2020, the UK will cease participation in the Community Plant Variety Rights Regime. The EU will no longer consider Community plant variety rights to cover the UK or the UK to be within the EU system. Rights owners will need to be aware of this and to ensure, for example, that EU rules about representation will continue to be met.

In the UK, however, the Withdrawal Agreement (Title IV) and The Plant Breeders' Rights (Amendment etc.) (EU Exit Regulations 2019 (SI 2019/204) will mitigate the effects of the UK leaving the Community Plant Variety Rights system. From 31 December 2020, the UK will treat each Community plant variety right contained in the register maintained under Council Regulation 2100/94, for the remainder of its term, as if it were a UK plant variety right granted in accordance with the Plant Varieties Act 1997. Owners of an application for a Community plant variety right which remains unresolved on 31 December 2020 will have six months in which to make an application to the UK Plant Variety Rights Office in respect of the same variety, maintaining the same application and priority dates as the EU application. From 1 January 2021, for new plant variety right protection separate applications will need to be made in the UK and in the remaining EU.

Defra's guidance on plant variety rights (and marketing plant reproductive material) from 1 January 2021 is available here.

The English law against misuse of confidential information, including trade secrets, has evolved in the tradition of the common law. This has long been considered to be compliant with the country's obligations under the TRIPS Agreement with respect to legal protection for "undisclosed information". The tort of breach of confidence protects information which has the "necessary quality of confidence", is communicated in circumstances importing an obligation of confidence, and is used (or threatened to be used) in an unauthorised way to the detriment of the owner (Coco v A. N. Clark [1969] RPC 41, Attorney-General v Guardian Newspapers (No 2) [1990] 1 AC 109).

In 2018, the first legislation addressing protection for confidential information came into force in the UK in the form of the UK Trade Secrets (Enforcement etc.) Regulations 2018, in order to ensure the compliance of UK law with the first EU legislation in the area - the Trade Secrets Directive 2016/943. The Directive requires EU member states to provide protection for trade secrets, which are defined (broadly) as information which (a) is secret, in the sense that it is not generally known or accessible in the circles that normally deal with the kind of information in question, (b) has commercial value because it is secret, and (c) has been subject to reasonable steps to keep it secret. The first case law from the High Court to consider the impact of the new legislation on the principles governing the common law tort suggests that the common law principles are unaffected.

Upon the expiry of the standstill period, the UK Trade Secrets (Enforcement etc.) Regulations 2018 will remain in force in UK law along with the body of CJEU case law as it stands at that date: it is unlikely that by 31 December 2020 any case law will have emerged from the CJEU significantly impacting the tort of breach of confidence in the UK.

In the medium term, the EU's legislation in respect of trade secrets is likely to further reduce the difference in available substantive protection for trade secrets which has been observed between the UK and some EU27 countries until recently. However, the difference between the (relatively high) level of procedural protection available in the UK for trade secrets that are peripheral to the subject matter of a dispute, and that available in some EU27 countries, is likely to remain, as this is outside the scope of the Trade Secrets Directive.

Domain names that end '.uk' (such as .co.uk and .org.uk) are managed by Nominet (nominet.uk). Registrations for '.co.uk' and '.org.uk' domain names are welcomed from anyone, anywhere in the world, without territorial restriction. This will not change upon the expiry of the stand-still period on 31 December 2020.

In contrast, domain names that end '.eu' are managed by EURid (eurid.eu). Such domain names may only be registered by an individual who is a citizen of, or resident in, a Member State of the EU, or by an undertaking, business or organisation established in the EU or the EEA. Upon the expiry of the standstill period, this will no longer include the UK. Registrations for which the eligibility criteria are no longer satisfied will be withdrawn on 1 January 2021; one year later (on 1 January 2022) withdrawn domain names will be revoked and made available for registration by other entities.

UK based owners of '.eu' domain names therefore should, if it is possible to do so, ensure that registration details are updated now, and in any event before 31 December 2020, so as to satisfy the criteria for registration as they will stand on 1 January 2021. The UK IPO's guidance on '.eu' domain names is available here; EURid's guidance is available here.

Intellectual property being territorial in nature, the courts in the UK will continue to have jurisdiction on issues of infringement and validity of intellectual property rights covering the UK following the 31 December 2020 transition. Indeed, international treaty arrangements generally reserve exclusive jurisdiction to the courts of the country for which an IP right has been registered and existing litigation practices within the EU and internationally reflect this.

The key difference for litigation practice in the UK after the 31 December 2020 transition is that the UK will no longer be within the EU/EEA regime governing service, jurisdiction and enforcement of judgments. As between the courts of the UK and the courts of the EU27 states, this is governed by the 'Brussels regime' (Regulation 12/15/2012); as between the courts of the UK and the courts of Iceland, Liechtenstein and Norway (the further "EEA countries") this is governed by the 'Lugano regime' (Lugano Convention 2007).

For litigation commenced in the UK on or before 31 December 2020, but not yet concluded, pursuant to the Withdrawal Agreement (articles 67 & 69) (and a withdrawal agreement concluded with the EEA countries), the Brussels and Lugano regimes will continue to apply.

From 1 January 2021, unless agreement to the contrary is reached between the UK and the EU, the Brussels and Lugano regimes will be replaced: in the UK, by the common law; and in each of the remaining EU27/EEA countries by their applicable national law. In the UK, the common law regime presently governs issues of service, jurisdiction and enforcement as between the courts in the UK and the courts in many other countries including, for example, the USA.

In addition, for disputes arising in the context of an agreement that engages the 2005 Hague Convention on Choice of Court Agreement, the present arrangements will continue to apply, without interruption, upon the expiry of the stand-still period. At present, well advised parties to a commercial agreement would already usually include a provision authorising service within England and Wales, as such service is more straightforward than under the Brussels and Lugano regimes.

Service, jurisdiction and enforcement of judgments is an area in which the common law arrangements could be improved upon, as between the UK and the EU27/EEA, by agreement. The UK has sought to accede to the Lugano regime; however for the UK to do so, the unanimous consent of all signatories is required, including the EU27. The replacement of the Brussels and Lugano regimes therefore remains the subject of negotiation between the UK and the EU.

The EU's customs regime (in particular Regulation 608/2013, along with associated and national implementing legislation) enables customs authorities in the EU Member States to detain, seize and destroy goods suspected of infringing an intellectual property right in a limited number of circumstances. The powers conferred on customs authorities by Regulation 608/2013 apply in respect of goods at their point of entry into or exit from the customs territory of the EU, not in respect of goods moving between the two EU countries. Until the expiry of the stand-still period, the UK remains within the EU regime (pursuant to the Withdrawal Agreement article 127). The customs authority in the UK is HM Revenue & Customs (HMRC).

Under the EU system, in order to facilitate the detention, seizure and destruction of goods suspected of infringing an intellectual property right, the owner of that right may file an application for action (AfA). For customs action at the border of one EU Member State (for example the UK), a national AfA would be filed with the relevant national customs authority (for the UK, HMRC). For customs action in two or more EU Member States, an EU AfA may be filed with the relevant customs authority of one Member State.

On 31 December 2020, the UK will cease its participation in the EU customs regime of Regulation 608/2013 (unless onward agreement to the contrary is reached between the UK and the EU). In practical terms, rights holders should be aware that, from the perspective of the EU27:

• existing AfAs made via the customs authority of an EU27 country will remain valid but will no longer cover the UK;
• existing AfAs made via HMRC will cease to have effect in the EU27; in order preserve AfA coverage in EU27 countries holders of such AfAs will need to make a new application via the customs authority of an EU27 country; and
• it will no longer be possible to obtain an EU AfA via HMRC.

For the UK, on 31 December 2020 The Customs (Enforcement of Intellectual Property Rights (Amendment) (EU Exit) Regulations 2019 (SI 2019/514) will amend the retained regulation (608/2013), so that the existing powers to detain, seize and destroy goods suspected of infringing an intellectual property right are retained by HMRC. Such powers will apply at the point of goods' entry into or exit from the United Kingdom, rather than (as is presently the case) the point of entry into or exit from the customs territory of the EU. However as exhaustion is a defence to infringement, retained Regulation 608/2013 (as amended) cannot be expected to permit the detention, seizure and destruction of parallel imports at their point of entry into the UK if the relevant intellectual property right has already been exhausted in the remaining EU/EEA (on which see section 4 above). In practical terms, rights holders should be aware that:

• national AfAs made via HMRC existing on exit day will remain in place until expiry;
• existing EU AfAs made via HMRC will remain in place in the UK (only) until expiry; and
• existing EU AfAs covering the UK made via an EU27 customs authority will cease to be recognised by the UK; in order to preserve AfA coverage in the UK holders of such EU AfAs will need to apply to HMRC for a national AfA.

At present, practical arrangements for AfAs in respect of goods suspected of infringing intellectual property at their point of entry into or exit from Northern Ireland remain unclear. The Withdrawal Agreement's Protocol on Ireland/Northern Ireland (article 4) provides that Northern Ireland is part of the customs territory of the UK. It also provides (article 5) that the EU's legislation comprising the Community Customs Code shall apply to and in the UK in respect of Northern Ireland (not including the territorial waters of the United Kingdom). The practical operation of this regime remains to be clarified. In the meantime, the Commission's 17 August 2020 notice to stakeholders in respect of customs enforcement of intellectual property rights states that from 31 December 2020 EU AfAs granted by a customs authority of an EU27 state in respect of Northern Ireland will be valid in respect of Northern Ireland.

Nevertheless, unless agreement to the contrary is reached, the UK's involvement in Regulation 608/2013 (which lays down the customs regime for goods suspected of infringing an intellectual property right) will cease on 31 December 2020; and with that will end the UK's access to the Commission's database on EU AfAs. This is also confirmed in the Commission's 17 August 2020 notice to stakeholders in respect of customs enforcement of intellectual property rights. It therefore remains unclear how effective an EU AfA will be in respect of goods imported directly into Northern Ireland (for example, into Belfast) following shipping or flight from a country other than the UK or the EU27 (for example, from a country in Asia), or in respect of goods moved from Great Britain into Northern Ireland. Clarification of arrangements in respect of Northern Ireland can be expected to emerge in due course.

While the expiry of the stand-still period on 31 December 2020 will be a significant transition for the law in the UK, the legislative preparations taken by the UK mean that all intellectual property rights covering the UK at that date will continue to confer protection in the UK for their remaining term.

The key points for intellectual property rights owners to be aware of are:

• Patents and supplementary protection certificates
  • From 1 January 2021, an application for a supplementary protection certificate made in the UK IPO must be based on a UK marketing authorisation.
• EU trademarks
  • For EU trademarks (and international trademarks designating the EU) registered by 31 December 2020, no steps are needed in respect of the extracted UK registration until the first renewal date after 31 December 2020, at which point payment of renewal fees in the UK IPO will be needed in order to preserve the extracted UK right;
  • For applications for EU trademarks that remain pending on 31 December 2020, owners can preserve the benefits of the application in the UK by filing, by 30 September 2021, an application to register the same mark in the UK, in respect of some or all of the same goods and services, while maintaining the same dates of filing, priority and seniority; and
  • Where a new trademark registration covering the UK is sought now, an application should be filed for a UK national trademark, irrespective of whether and how protection is sought for the EU.
• EU ('Community') designs
  • For Community designs (and international designs covering the EU) registered by 31 December 2020, no steps are needed in respect of the extracted UK registration until the first renewal date after 31 December 2020, at which point payment of renewal fees in the UK IPO will be needed in order to preserve the extracted UK right;
  • For applications for registered Community designs (and applications for international designs covering the EU) that remain pending on 31 December 2020, owners can preserve the benefits of the application by filing, by 30 September 2021, an application to register the same design in the UK while maintaining the same dates of application and filing, and the same claim to priority as the Community application;
  • Where new registered design protection covering the UK is sought now, an application should be made for a UK national registered design, irrespective of whether and how protection is sought for the EU; and
  • For new designs that have yet to be made available to the public and for which unregistered design protection is a part of the protection strategy, professional advice should be sought on when and how the designs should first be made available to the public, as well as whether and where registered design protection should be sought.
• Copyright mechanisms
  • Businesses that presently rely on the EU's reciprocal mechanisms in respect of online portability, sui generis database protection, copyright clearance in respect of broadcasting, the use of satellite decoder devices intended for a country other than the UK, collective rights management, and licensing of orphan copyright works, should be aware of the changes that will take place on 31 December 2020, as summarised in section 5e above.
• Customs registrations / AfAs
  • Businesses that presently employ customs registrations (AfAs) at the border of the EU as a part of their intellectual property enforcement strategy should ensure that new applications are filed with customs authorities in the UK and/or an EU27 state, as appropriate in order to preserve the desired reach of AfA registration after 31 December 2020. It will not be possible to rely on a UK AfA in respect of genuine goods imported into the UK after being placed on the market with the right owner's consent in the remaining EU.

For bespoke advice tailored to your business's need, please get in touch.