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Brexit: legal implications for the design industry

The DBA and our legal advisors Humphries Kirk have already identified possible threats to the owners and creators of Brands article and of three dimensional designs following Brexit.

The DBA is taking steps to further identify these threats, to inform members about them and will be lobbying for the UK government to recognise these threats and make appropriate transitional arrangements.

Brexit and the effect on Brands

A substantial sector of the Design Industry are involved in the creation and support of Brands. Brands are legally supported by registered trademarks, registered in the individual countries of the EU (and often then registered as international marks in WIPO of Geneva) or registered in the European Trademark registry by OHIM.

WIPO World Intellectual Property Organisation
OHIM Office for Harmonisation in the Internal Market
ECJ European Court of Justice

The ECJ has for some years been recognised as the definitive source of interpretation of the law relating to European trademarks. As a result of harmonisation of law relating to trademarks across the EU, the individual national legal systems have tended to defer to the ECJ and indeed often referred decisions to it.

After Brexit the UK will probably no longer be a member of the union covered by OHIM and so at least theoretically a European Trademark will no longer be valid in the UK. Owners of European trademarks will have the choice of registering their brands in the UK or registering their brands as international trademarks with WIPO and designating the UK as one of the countries. In my experience both WIPO and the UK registry are quick and sensible.

Brand owners who do not do this could be in danger of becoming victims of brand squatting – that is when a person spots that a European registered brand is no longer registered in the UK following Brexit and nips in and registers it (or if clever, something very like it). The aggrieved victim of brand squatting would then have to buy the UK rights or bring a legal action in the UKPO tribunal for revocation.

For example if “Danone” rely only upon EU trademarks then they would be vulnerable to a brand squatter registering “Danene”!


Decisions of the ECJ

After Brexit the decisions of the ECJ will no longer be binding on the English courts (they may remain binding in Scotland) but will be of persuasive effect. By this I mean that an English (or Scottish) judge must follow and implement the judgements of the ECJ when considering cases before him/her. However after Brexit he/she will no longer be bound by decisions of the ECJ made after Brexit but Judges are always careful to consider the decisions of senior courts (provided they are considering the same facts and the same law) and to take them into consideration, but not to be bound to follow them.

We have the precedent of the British Empire- when countries (such as Australia) were part of the Empire their courts accepted the final jurisdiction of the Highest English Courts (then the House of Lords) but when they became independent the previous decisions made historically remained valid but new decisions were made by the highest national court.

I would expect the same to apply in England- the past decisions of the ECJ will remain binding but future decisions will be only of persuasive effect.


Registered Designs and Patents

Patents are already dealt with by international treaties that pre dated the EU. I would expect the system to work very much as at present- patents will be granted by the UKPO for the UK and the European Patent Office will no longer be able to administrate a Europe –wide patent to include the UK as one of the chosen countries. However I anticipate that the ability to obtain an internationally recognised priority date will remain as at present. As patents are issued on a country by country basis there will be no effect on enforceability.

Registered Designs are different and more troubling for the design industry. A substantial sector of the design industry design objects for their clients. The UK design registry will not be affected by Brexit.

However it is probable that upon Brexit the UK will no longer be covered by the European Design Registry. Designs that are registered their will no longer be protected in the UK. However because those designs will no longer be “new/novel” they will not be capable of new registration in the UK registry.


Copyright and Design Right

Copyright (and for three dimensional designers, Design Right) underpin the whole design industry. This area of law is harmonised across the EU, but in fact is based upon English Law (harmonised across the UK) which was passed in 1988 and was itself driven by international treat, the origins of which precede the UK joining EU (the Berne Convention and its various predecessors).

Copyright law and Design Right law will continue as at present. Decisions of the ECJ after Brexit will become of non binding but of persuasive effect.

What will be different is that the UK recognises the copyright/design right of authors and designers from all across the EU (and indeed of non EU authors or designers who either work in the EU or first publish their work in the EU. This may change in the future after Brexit but it is hoped the UK government to recognise this threat and make appropriate transitional arrangements.


Conclusion

Brexit will make material changes to the ways that Designers must act to protect their clients Brands and Designs and their own literary and artistic portfolios. The issues that can be recognised now are complex and no doubt further complexities will arise as the process unfurls.

DBA members who deal with brands or designs that are covered by European registration should be especially careful to ensure that they and their clients review the situation and take advice.

Image credits: © Constantin Stanciu | Dreamstime.com