Does Your IP Strategy still work?

 

Author Furdur Source Wikipedia

Jane Lambert

The purpose of intellectual property is to protect investment in developing a revenue generating asset. That is the reason for the business strategy that I outlined in Putting IP at the Hear of your Business Plan 2 Jan 2015.  That strategy identifies the optimum legal protection for the intellectual assets likely to contribute most to your business and the steps needed to enforce such protection.

For a lot of businesses, the optimum legal protection was an EU trade mark a registered Community design or, in a few cases, a Community plant variety. These ceased to apply to the UK from 23:00 on 31 Dec 2020 though art 54 of the Agreement on the Withdrawal of the UK from the EU provided for the assets that had been protected by those rights to continue to be protected in the UK by s corresponding British trade mark, registered design or plant variety.

The withdrawal agreement ensured continued subsistence of the legal protection for those intellectual assets but they could do nothing about enforcement of such protection.  Courts in the UK ceased to be EU trade mark and Community design courts and the UK.  Moreover, the Civil Jurisdiction and Judgments Regulation (Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters OJ L 351, 20.12.2012, p. 1–32) also ceased to apply to the UK on 31 Dec 2020. The British government has applied to join the Lugano Convention (Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters OJ L 339, 21.12.2007, p. 3–41) which contains many of the same provisions as Regulation 1215/2012 but its application ha not yet been accepted.

The upshot is that if the intellectual property rights of a British company are infringed or challenged in one or more of the 27 remaining member states they can no longer look to a court in the UK for redress.  If, which is likely to happen in many cases, the rights protecting the asset are infringed or challenged in the UK as well as one or more EU member states there will have to be at least two actions.

Further, although art 54 of the withdrawal agreement guarantees the continuation of existing EU registered rights separate applications will have to be made for new rights to protect intellectual assets in the EU and UK.  I discussed trade mark and design registration with a patent attorney recently who advised me that the EU Intellectual Property Office in Alicante was for all intends and purposes a foreign trade mark and designs registry. She intended to make future applications through the Madrid Protocol and Hague Agreement.

I discussed these developments yesterday with my colleague Guido Carducci who is an Italian lawyer teaching and practising in France. We agreed that Brexit will affect (in some cases quite radically) the legal risks of businesses on both sides of the Channel both big and small.   As there is not a lot of discussion on the topic in either the business or legal press we thought that a webinar or maybe even a series of webinars with colleagues in other EU member states could be useful.

The purpose of this brief article is to start a discussion with lawyers and business people and I would be very interested in readers' comments.  Anyone wishing to discuss this article with me can call me on +44 (0)20 7404 55252 during office hours or send me a message through my contact form.