Legal & Government Affairs Update Issue 1 - 2019 | FAST

Legal & Government Affairs Update Issue 1 - 2019

News

UK Government publishes guidance on IP and Brexit

On 16 January 2019, the UK Intellectual Property Office (IPO) published a guide on the future of intellectual property (IP) law following Brexit. The guide covers a wide range of IP rights and confirms the position set out in the set out in the UK/EU Withdrawal Agreement: that the UK will continue to protect all existing registered European Union Trade Marks, Registered Community Designs, and Unregistered Community Designs as it leaves the EU.

Holders of IP rights registered under an EU wide system, such as EU trade marks or registered community designs, looking to this guide to provide clarity on how Brexit will impact the rights and protections they currently enjoy in the UK will be disappointed. While the Government is keen to stress it plans to ensure these rights will continue to be effective in the UK post-Brexit, the guide does not state any specific plans on how the Government proposes to do this.

Copyright

The guide confirms UK copyright laws will continue to comply with EU copyright directives while it remains a member of the EU. The various international treaties and agreements protecting copyright the UK is a party to means that the majority of UK copyright works will continue to benefit from worldwide protection after the UK leaves the EU. This includes books, music, films and software. However Brexit is likely to affect certain cross-border copyright mechanisms and the UK is exploring arrangements on IP co-operation to continue the effectiveness of cross-border copyright enforcement once the UK leaves.

Trade marks

The guide confirms the existing UK trade mark system will be largely unaffected by Brexit. In the meantime, EU Trade Marks (EUTMs) will continue to be valid in the UK and in the remaining EU Member States once the UK leaves. UK businesses will still be able to register EUTMs post-Brexit, although these will no longer cover the UK.

For all EUTMs registered before the UK leaves, the UK Government intends to ensure continuity of protection and avoid the loss of existing rights EUTM holders have in the UK. It is exploring options to do so but unfortunately the guide does not clarify what exactly the UK intends to do to ensure continuity of protection for EUTM rights in the UK. One possible option could be to offer all EUTM holders the option of being granted an automatic UK trade mark when Brexit occurs but the UK has yet to commit to an approach.

The Government also notes the UK is part of the Madrid System, an international trade mark system which allows users to file a single application and a single fee to protect a trade mark in 113 territories (including across the EU). This can be used by UK businesses looking for broad cross-border protection post-Brexit.

Designs

The UK system for protecting designs will be unaffected by Brexit. The guide goes on to consider the impact of Brexit on Registered Community Designs (RCD), unregistered rights and rights of representation.

Registered community designs

Registered Community Designs will continue to be effective in the UK while it is still a member of the EU and will still be effective in the remaining Member States once the UK Leaves. Where RCDs are concerned, the guide repeats much the same pledge as for EUTMs – the Government will seek to ensure continuity of protection and avoid the loss of existing rights RCD holders have in the UK. UK businesses will still be able to register RCDs post-Brexit, although these will no longer cover the UK.

Once again, the Government notes the UK is part of an international system which permits cross-border protection of RCDs with a single registration. The Hague System for the International Registration of Industrial Designs allows for registration of up to 100 designs in over 68 territories.

Unregistered designs

Where unregistered designs are concerned, the current unregistered Community designs system (which gives designs automatic 3 year protection from copying across the EU) will remain in effect while the UK is a member of the EU. Once the UK leaves, unregistered designs will continue to be protected in the UK by the UK specific unregistered design right. Currently this has a narrower scope than the EU design right but the UK has said it plans to establish new schemes to match the full scope of the Community design right in the UK.

Patents

The current European patent system will not be affected by the UK's exit from the EU because it is governed by the separate European Patent Convention, which is unrelated to the EU. Existing European patents will be continue to be effective in the UK and across the EU post-Brexit and UK business can continue to apply for them post-Brexit.

The UK intends to stay as a member of the Unified Patent Court and unitary patent system after it leaves the EU, having ratified the Unified Patent Court Agreement on 26 April 2018. The unitary patent system will apply across Europe and the Unified Patent Court will deliver judgments of cross-border patent disputes.

Conclusion

While the UK Government is clearly committed to ensuring Brexit has a minimal impact of existing IP rights, the position is far from certain and readers are advised to consider carefully the impact of Brexit on their IP.

Readers wishing to read the IPO's guide in full can do so by following the link below:

https://www.gov.uk/government/publications/ip-and-brexit-the-facts/ip-and-brexit.

Legislative Updates

Court rules imposing a suspended sentence does not preclude the award of additional in copyright infringement case

At a hearing on 12 December 2018, the Court of Appeal decided that a court could impose both a suspended sentence for contempt of court and award additional damages. Although the court confirmed this principle, in the case in question it elected not to award additional damages as the breach of the injunction giving rise to the custodial sentence was not considered to be flagrant so as to warrant an additional damages award.

In the case of Phonographic Performance Limited v Andrew Ellis t/a Bla Bla Bar, a claim was brought by Phonographic Performance Limited (PPL), a UK music licencing company, against Andrew Ellis. Mr Ellis was found to be in breach of an injunction preventing him from engaging in copyright infringement by restraining him from playing music in public without a licence and was given a suspended prison sentence. PPL then petitioned the court to award it additional damages under the Copyright, Designs and Patents Act 1988, which permits additional damages in excess the levels of actual loss to be awarded for flagrant copyright infringement.

Initially the High Court ruled that additional damages could not be awarded, stating "... there is very clear authority that the court should not fine a contemnor at the same time as imposing a custodial sentence as punishment for a contempt." PPL appealed the decision on the basis this was an incorrect principle.

The Court of Appeal dismissed the case but agreed with PPL that the principle formulated by the High Court was incorrect; there is no reason why a court cannot impose both a fine and a custodial sentence for contempt of court. As the High Court's decision was flawed, the Court of Appeal examined again whether additional damages should be awarded. It found that the breach my Mr Ellis resulted from his misunderstanding of the injunction and therefore the copyright infringement was not flagrant. Additional damages were not awarded.

This is a self-contained but interesting point of law, particularly relevant where copyright holders are the victims of sustained infringement. If an injunction is obtained and breached by an infringer, a copyright holder should note that additional damages could be awarded if the infringement is flagrant, in addition to a custodial sentence.

Book Recommendation

Hello World: How to be Human in the Age of the Machine by Hannah Fry

Artificial Intelligence (AI) looks set to be a hot topic in 2019 (just as it was in 2018). In Hello World: How to be Human in the Age of the Machine, Hannah Fry takes an in-depth yet accessible look at the influence of AI, data and algorithms in our lives, ultimately posing some fundamental questions about the role of AI and our use of algorithms in society.

Hannah Fry is an associate professor in Mathematics of Cities at University College London working with mathematical models to study human behaviour. Readers might be familiar with her appearances on radio and television in the UK or her popular TED Talks.

This book provides an excellent introduction to the mathematics behind the computer algorithms we experience every day and what they can and can't do, giving detailed examples of how they are transforming our lives. You may find yourself a bit less comfortable with the expanding role machines play in your life after reading this book.