Published: 1 November 2019
Rights owners should consider their position on Customs enforcement so they are ready to take action as further guidance on Brexit is issued. By Emma Green
It is fair to say the nerves of rights owners have been tested over the Brexit journey to date. Growing pressure to prepare ahead of hard-stop deadlines, which are ultimately deferred, extended and flexed, has created significant concern and uncertainty for those who want to ensure their brand remains adequately protected after Brexit. IPO guidance has clarified the intention to create equivalent UK protection for the existing pan-European IP rights but there has been significantly less discussion around the mechanisms to establish a national UK Customs Enforcement system.
The draft Customs (Enforcement of Intellectual Property Rights)(Amendment)(EU Exit) Regulations 2019 issued on 1 March 2019 reassured brand owners and practitioners that the new UK Customs Enforcement system would largely adopt the existing EU AFA framework of Regulation (EU) No 608/2013. The complexity comes in managing the transition between the two systems.
Planning for a no-deal Brexit
EUIPO guidance issued in June 2018 indicated that any EU AFA filed via HMRC would cease to have effect in its entirety from the date of Brexit in the event of a no-deal.
Rights owners breathed a sigh of relief when the draft UK Customs Regulations confirmed that EU AFAs filed via HMRC will remain valid and enforceable in the UK until their natural expiry date, albeit that protection cannot subsequently be renewed. Protection will cease in EU27 as anticipated. Rights owners will therefore need to file:
- a new EU AFA via a EU27 Customs office before the exit date under a no-deal Brexit; and
- a new UK AFA prior to the natural expiry date of the original AFA.
EU AFA's filed via an EU27 Customs office will remain valid and enforceable in EU27 after a no-deal Brexit but, logically, will cease to have effect in the UK. The HMRC Customs policy team has indicated that HMRC may continue to recognise existing EU AFAs in the UK for a short transitional period after a no-deal Brexit, to allow rights owner's time to obtain protection under new national UK AFAs. The duration of this period is, as yet, unconfirmed.
HMRC is yet to issue the new national UK AFA forms outlined under the UK Customs Regulation and has not indicated when these will be available. A short transitional period would therefore no doubt be welcomed by rights owners, acting as an essential safety net until the UK framework is fully established.
Transitioning in the event of a deal
During any agreed transitional period, EUTMs and RCDs will remain valid in the UK, HMRC will remain a competent EU customs authority and the EU Customs Regulation will continue to apply. The existing AFAs will remain in force until their natural expiry date.
Rights owners should confirm the remaining term of any existing AFA and identify where it was filed: these factors will fundamentally determine the necessary action.
If no changes are required to an EU AFA filed via HMRC, rights owners who wish to defer costs can simply renew via HMRC up to 30 days before expiry. A new EU AFA will still need to be filed before the withdrawal date to maintain protection in EU27. Alternatively, an EU AFA can be filed via an EU27 Customs office, and this will need to be supplemented by a new UK AFA once the framework is established.
If changes are required and the EU AFA was filed via HMRC, renewal is not an option, so a new EU AFA should be filed via an EU27 Customs Authority before expiry of the term. This can still designate the UK (to avoid interim gaps in protection) but as UK protection will fall away from the EU AFA on exit, a national UK AFA should also be filed once available.
The easiest position is for existing EU AFAs filed via an EU27 Customs Authority: that can be renewed or updated as normal. A new UK AFA will be required before the withdrawal date to ensure continuous protection.
Other relevant factors
The content of new UK AFA forms will mirror the existing EU framework. All information will need to be provided afresh, as HMRC will no longer have access to the pan-European COPIS database. There will be no filing fee.
Rights owners will need to list existing national UK registrations and the new equivalent registrations created from EUTMs and RCDs – guidance on the numbering of those rights has been issued by the UKIPO. [See pages 16-27.]
Practitioners will likely need to acquire new letters of authorisation to confirm that they are authorised to file the applications under the new domestic legislative framework (assuming existing authorisations were granted by reference to the EC Regulation).
As we face a brief reprieve from Brexit discussions in the wake of the UK General Election on 12 December, rights owners are advised to use this time to review their existing AFA protection and refine their enforcement strategy.
Emma Green is an Associate in Bird & Bird's Brand Management and Intellectual Property teams. Emma support clients in contentious matters, representing them in UK and EUTM oppositions, revocation and invalidity proceedings as well as negotiating amicable settlements and co-existence agreements. Emma works with clients to devise their international brand enforcement strategy, tackling infringements across online platforms and have extensive experience in establishing EU-wide anti-counterfeiting programmes. Click here to see more.
Also published in the Brexit edition of the CIPA Journal.