Issue 2 2020

Acquisition International - Issue 2 2020 55 Dec19398 Exceptional IP Lawyer ackground Decisis is a legal consultancy specialising in IP (with a focus on trade marks, copyright, designs and confidential information) and IT contractual matters. The consultancy was founded in 2007 by Michael Bilewycz, who was previously Managing Director of the Omnicom boutique IP firm, Markforce Associates, until its sale in 2007. Client types include marketing businesses, IT businesses, fashion businesses and financial services businesses. Our aim is to utilise commercial and business insight in formulating and providing solutions. Decisis places an emphasis on flexibility and the benefits of providing a personal, bespoke and expert service to its clients and to deliver, wherever possible, solutions to those clients’ issues. Important legal issues Brexit The UK has now taken the momentous step of departing the European Union. The relationship between the UK and the EU is now governed by the Withdrawal Agreement. Under that agreement a Transition Period is in place which is due to expire on 31 December 2020. After that date we must expect very substantial changes in Intellectual Property, and some of the expected changes are outlined below. Trade Marks Until 31 December 2021 the UK will continue to be part of the EU Trade Mark system. In essence, this means that until 31 December 2020, all EU trade mark registrations (“EUTMs”) will continue to provide enforceable rights within the United Kingdom. However, after 31 December 2020 EUTMs (including EUTM pending applications) will no longer provide protection in the UK. It is currently envisaged that the UK will provide owners of existing EUTM registrations with corresponding UKTM registrations, at no cost to the owners. These UK trade marks will be given their original filing dates, and will also inherit any priority and/or seniority dates. EUTM registration owners will be free to opt out of this new right as from 1 January 2021. During the nine months after 31 December 2020 EUTM applicants will be able to file a UK TM application and retain the earlier filing date of their pending EUTM. The normal UK fees will apply. These exclude the fees of a professional representative. The details of the UK application must match those of the corresponding EUTM application. Copyright It is impossible to detail all of the changes that will come about, but examples include the following. Online content services The EU Portability Regulation allows consumers across the EEA to access online content services such as video streaming as if they were at home. This arrangement will no longer continue because the regulation will no longer apply. This will not prevent providers from offering cross-border online portability content services on a voluntary basis, but the terms of these services are expected to change. Sui generis database rights UK citizens, residents and businesses will no longer be eligible to receive or hold EU Database rights, and the owners of existing rights B may find them unenforceable, unless they find alternative methods such as the use of licence agreements. Database rights that exist in the UK prior to 31 December 2020 (whether held by UK or EEA persons or businesses) will continue in the UK. Satellite broadcasting The EU Satellite and Cable Directive permitted satellite broadcasters to transmit copyrighted works (e.g. films) between EEA member states provided they obtain permission from the copyright owner for the state in which the broadcast originates (the ‘country of origin’ principle). After 31 December 2020 UK broadcasters might need to obtain additional right holder permissions covering each EEA state to which they broadcast, and this will also be subject to the domestic legislation of each relevant EEA member state. Satellite broadcasters will therefore need to consider whether they need to amend their current licensing arrangements. In the UK the ‘country of origin’ principle will continue to be applied to broadcasts from any country. Registered Community Designs (RCDs) The UK IPO will provide an equivalent national right without charge. The new UK rights will retain their application/registration dates as well as any priority dates. Applicants with pending applications will be able to apply for new UK design registrations, and will be able to claim any filing date or priority date of the corresponding RCD applications provided they file within nine months of 31 December 2020. UK IPO standard design fees will be payable. Independent law firms My perception of small independent specialist law firms is that they view Brexit as presenting opportunities. These firms are flexible, provide a high standard of expertise and specialisation, and manage their costs very effectively. Indeed, I expect that business demand for small independent specialist law firms in the UK will only increase. Plans We are developing initiatives to enable businesses to manage their own IP rights, utilising technology and communications. We are also working to build a committed and long-lasting network of independent, highly qualified, and specialist legal professionals. This will enable SMEs and start-ups to be able to access a range of specialist legal services via one group contact. Whilst the current political climate presents huge challenges, we should never lose sight of the fact that technology, the Internet and social media, whilst presenting clear challenges, also present opportunities. Michael Bilewycz, Managing Director BA (Hons.), LLM, Registered Trade Mark Attorney, Barrister Decisis Limited, 5 St. John’s Lane, London,EC1M 4BH Tel: 020 7250 4732 | Fax: 020 7250 4733 E-mail: [email protected]