3 minute read
IP IN THE GLOBAL MARKETPLACE
Doesn’t a year pass by quickly? We are fast approaching the first anniversary of the UK leaving the EU on 31st January 2021. But what has changed in the time since? And how has it impacted local businesses?
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Someone who’s closely followed the changes is Alex Sheil, partner in the Intellectual Property and Information Technology (IP/IT) team at Ward Hadaway. In his role, Alex helps clients to protect, develop and enforce their ideas and new technology. He’s been ranked an expert in the field by both Legal 500 and Chambers.
He comments, “Whilst Brexit has had a wide-ranging impact on UK businesses, in relation to intellectual property (IP) the main change was that (with effect 31st December 2020) the UK ceased to be a member of the EU registered trade mark and registered design systems.
“From that date EU trade mark and design registrations no longer cover the UK and instead “comparable rights” were granted to cover the former EU rights in the UK.
“Over the last year Government has announced trade deals and negotiations with a range of countries across the world to replace those that the UK benefited from when it was a member of the EU and, as part of this, businesses have been encouraged to look at the opportunities to sell their goods and services in the global marketplace, rather than only focusing on the closer to home EU market.” Protecting IP in a global marketplace is vital for any fast-growing business, Alex notes it can throw up extra challenges that need to be dealt with.
He continues, “There are approximately 195 countries in the world and it is not possible to register a ‘global patent’ or a ‘worldwide trade mark’ that protects the technology or brand of a business in all those countries in one application. IP rights have to be protected on a country by country basis, either by registering IP rights in individual countries or by using one of the international systems that enable IP protection to be obtained in countries that are members of the relevant registration system.
“In the post-Brexit world our clients are increasingly looking at the alternatives to the EU only IP registration systems. Luckily there are a number of ways to efficiently register IP rights in a large number of the main markets in the world, the main ones being PCT (The International Patent System) which can be used to protect patentable inventions in the 153 states that are members; Hague (The International Design System) which enables designs to be registered in 75 contracting parties covering 92 countries; and Madrid (The International Trademark System) trade mark protection for brands can be obtained through registration in the 124 member countries.” However, because registration fees are payable for each country selected for protection, Alex adds that choices still need to be made for budgetary and economic reasons. Furthermore, the process for making applications using these systems can be complex and difficult.
Alex continues, “An essential first step, therefore, is for businesses to develop a clear strategy that identifies their priorities in terms of customers and markets, the location and plans of their competitors, their route to market in each existing or new territory and the ROI that their investment in IP protection in specific countries is likely to achieve.
“Our specialist IP team helps businesses to protect and maximise the value of their IP on the global stage and to make best use of the PCT, Hague and Madrid systems to achieve this.”
wardhadaway.com
katherine.richards@wardhadaway.com
