Ringing the changes: UK and EU IP developments

This briefing covers a number of recent developments set to impact IP practitioners: first, the UK’s ratification of the Unified Patent Court (UPC) Agreement; secondly, the Brexit Withdrawal Agreement, published on 19 March; and finally, the effect of GDPR on domain name registration practice. 

UPC Agreement ratification

The UK Government ratified the UPC Agreement on 26 April 2018. Previous articles have considered the UPC system in detail (see briefing at Journal, March 2017, 27, and “The UPC post-Brexit: unified, ‘emmental-ed’, or dead?”, Journal online, October 2016). In summary, it creates a mechanism for the European Patent Office to grant unitary patents covering all EU member states which have signed up to the UPC system. Disputes relating to unitary patents, and existing European patents, will be heard in the Unified Patent Court, a cross-jurisdictional court with central and local divisions in various EU member states.

The UPC Agreement will come into effect once 13 EU member states, including the UK, France and Germany, have ratified it. It remains only for Germany to ratify. However, a constitutional challenge has been raised in the German Federal Constitutional Court, which is set to delay Germany’s ratification.

Responsible for administering the new system, the UPC Preparatory Committee has advised that it will require a provisional application phase of six to eight months before the court becomes operational. Thus, depending on the timing of the German court’s decision, that phase may not be completed by Brexit day on 29 March 2019.

In its current form, the UPC system can only be participated in by EU member states. If the UK is to participate post-Brexit, the UPC Agreement will likely require to be renegotiated to accommodate this. Ratification seems a declaration that the UK wishes to participate in future. However, whether the EU27 member states are as willing to include the UK remains to be seen.

Brexit Withdrawal Agreement

The revised draft Brexit Withdrawal Agreement, published by the UK and the EU Commission on 19 March 2018, provides some clarity on the likely effect of Brexit on pan-European IP rights.

There will be a transitional period until 31 December 2020, during which time the existing system will continue in full effect. Thereafter, holders of granted EU trade marks (“EUTM”), registered Community designs (“RCDs”) and Community plant varieties, will become holders of equivalent rights in the UK.

Rights-holders will not have to re-apply for these rights, or follow any administrative procedure. Rights will not be re-examined to reassess their validity. Negotiations continue as to whether a fee will be payable. There will be a procedure to convert pending applications into UK rights also.

Similarly, unregistered Community design right will continue to be protected in the UK, as will certain protected geographical indications and designations of origin.

Various other complex topics have been addressed, including:

• If an application to revoke or invalidate an EUTM or RCD is pending at the end of the transition period, and the right is subsequently invalidated/revoked in the EU, that decision will apply in the UK also.
• Trade marks can be revoked for non-use. Principles have been agreed to determine what happens if the UK equivalent right to an EUTM has not been used in the UK during the transition period. The deadline for commencing use in the UK has not yet been decided.
• Principles have been agreed regarding the enforcement of EUTMs with a reputation in the EU (but not the UK) during and after the transition period.

There are various unanswered questions, such as how exhaustion of rights will operate post-Brexit. This will depend on any trade deal agreed between the UK and the EU27. The UPC system and UPC Agreement are not discussed in the draft Brexit Withdrawal Agreement. In addition, as with all provisions of the draft, “nothing is agreed until everything is agreed”. However, the current draft represents a sensible approach to IP rights that is favourable to rights-holders and thus, generally welcomed by IP practitioners.

GDPR and domain name records

Until recently, the records of all Nominet domain names (those with the suffix .uk), and of most other domain names (e.g. .com, .org etc), contained details of the registrant’s name and address. Domain names are often a key battleground in IP disputes, and these details can be valuable in discovering who is behind an infringement and where they are located.

Following the entering into force of GDPR, Nominet has changed its policy so that registrants’ names and addresses will no longer be displayed in Nominet’s searchable register of domain names, unless the registrant consents. However, these details can be requested using Nominet’s new data release request procedure, whereby details will be released if the requester can demonstrate a legitimate reason for the request. Nominet gives as an example of a legitimate reason, a request from a solicitor enforcing IP rights. Nominet will aim to respond to such requests within one working day.

ICANN (which sets rules in respect of .com, .org and other top level domains) has put in place a similar procedure, whereby data can be requested by those with a legitimate reason.

These new schemes are as yet largely untested, but while they present a further hurdle in IP enforcement, it seems this is not insurmountable.