Post-Brexit: key IP and privacy implications Australian businesses should be aware of

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By Malcolm McBratney, Partner, and Teneille Meyer, Lawyer

Now that the dust has settled on Brexit, many of our clients are trying to understand the impact that Brexit may have on them. This article focuses on the key intellectual property (IP) and privacy implications that Australian businesses should be aware of.

Brexit: an overview

Since 31 January 2020, a Brexit transitional period has been in place and will continue until 31 December 2020. During this transitional period, nothing will change in relation to existing IP and privacy laws, as existing EU laws will continue to apply to the UK.

On 1 January 2021, the transitional period will be at an end and ‘Brexit’ will be in full force.

What happens to existing IP rights?

Registered trade marks and designs

During the transitional period, there will be no changes to EU trade mark and design applications, registrations or proceedings. At the expiry of the transitional period, all registered EU trade marks will be automatically granted equivalent trade mark rights in the UK. Similarly, holders of existing international trade mark registrations under the Madrid Protocol which designate the EU will automatically hold equivalent UK trade mark rights (as with design rights).

After these rights are granted in the UK, the UK rights will need to be renewed separately and fees will be payable in both the UK and EU for renewals going forward.

Pending trade marks

After the transitional period ends, any pending EU trade marks will not be automatically granted equivalent UK trade mark rights. However, applicants may apply to register an equivalent UK trade mark in the nine months after the transitional period ends and claim the earlier EU filing date and any valid international priority the applicant had on the pending EU application.

Domain names

After the end of the transitional period, .eu domain names owned by non-EU entities (including UK entities) will be withdrawn, unless the ownership is transferred to a company that is registered in one of the remaining EU Members states.

Patents

Brexit does not affect existing or future patents as the European Patent Office, the entity that oversees the examination and grant of European patent applications, is separate from the EU.

Copyright

Similarly, Brexit also does not affect protection for copyright works, as such protection is already assured by international copyright treaties.

Database rights

During and after the transitional period, any database rights that exist in the EU will continue to be recognised in both territories for the remainder of their term.

Briefly, database rights in the EU protect: (1) the content of the database (via a ‘sui generis’ right, which is not currently recognised in Australia); and (2) the structure of the database (via copyright).

If the database is an original creation, it will be automatically protected through copyright. However, copyright subsists in the structure of the database, not its content.

Conversely, if the structure of the database is not an original creation, its content can be protected from extraction and/or whole or partial reuse under the sui generis right. However, to benefit from the sui generis right, the maker of the database must be an EU national or resident. Sui generis protection is automatically granted to the maker of the database for 15 years from the creation date or from when the database is first made publicly available, provided the database meets the requirements for the protection.

What happens to future IP rights?

Trade marks and designs

After the transitional period ends, businesses will need to consider how and where they intend to use the proposed new trade marks and designs. If the business intends to use the trade marks and designs in the EU and UK, applications will need to be filed in both jurisdictions.

Databases

After the transitional period ends, there is no obligation on members of the EU to provide new sui generis rights to UK entities (however, copyright protection will still automatically apply). Businesses may therefore need to consider contractual arrangements to protect their rights in databases.

Patents and copyright

There will be no changes to future patent or copyright rights.

Privacy laws

During the transitional period, the GDPR will continue to apply in the UK. According to the UK’s Information Commissioner’s Office (ICO), negotiations in relation to how the GDPR will apply to the UK after the transitional period ends are still taking place. At this point, guidance from the ICO suggests that the GDPR will be incorporated into UK law as the ‘UK GDPR’.

Ultimately, Australian businesses will need to remain vigilant with regard to the collection, use and disclosure of personal information and data to organisations outside of Australia, particularly when information flows between the EU and UK. In these circumstances, GDPR safeguards may need to be put in place.

How to enter the EU post-Brexit

Prior to Brexit, many of our clients would base their operations in London in order to enter the EU market. However, now that Brexit has occurred, our clients are questioning whether or not this remains an appropriate approach.

Ultimately, this will depend on the intentions of the business. For example, businesses may consider launching their EU operations in Ireland, as an alternative English speaking nation. Of course, if the business still wishes to operate in the UK, it may prefer to keep its operations there.

What should you do now?

  • Conduct an IP portfolio review: we suggest conducting a review of your existing trade mark / design portfolio to identify any pending EU trade mark / design applications, EU trade marks that may be near expiring, and for general ‘health check’ purposes. For example all EU pending applications should be reviewed in order to identify and promptly rectify any issues that may potentially prevent registration. This will assist with enabling the marks to become registered during the transitional period (and therefore ensure that equivalent rights are granted in the UK after the transitional period ends).

It would also be a good idea to identify any marks that may be nearing expiry to ensure they are renewed during the transitional period (if possible).

A general IP portfolio review can also be useful when determining your operational strategy moving forward. For example, if you do not operate in the UK, you may not need to register new marks in the UK after the transitional period ends (and visa versa).

  • Transfer .EU domain names: if you hold a .eu domain name and operate in the UK, you should consider whether or not you intend to keep the domain name. If so, the domain name should be transferred to an entity within an EU member state in order to ensure the domain name is not automatically withdrawn.
  • Review existing IP licence agreements: we suggest that you conduct a review of any existing IP licence agreements in place. These agreements may be internal IP agreements (e.g. an IP licence between the IP Holding Company and other subsidiaries), or external IP Agreements. These IP Agreements may need amending based on different governing jurisdictions, references to legislation, and references to registered IP rights post-Brexit.
  • Consider Data: we also suggest that you consider the flow of personal information and data between: (1) your customers to your business; and (2) subsidiaries, contractors, etc. within your business. It is important to understand this flow of data to ensure your operations remain GDPR compliant, particularly following the Brexit transitional period.

If you have any questions regarding your existing EU IP rights or operations in the EU or UK post-Brexit, we are happy to assist.

For further information, please do not hesitate to contact us.

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