A no-deal Brexit could see an unexpected rise in the number of trade mark infringement claims as a result of traders carrying on “business as usual”, warns intellectual property specialist Susan Hall.
Susan, (pictured) partner at national law firm Clarke Willmott LLP, said if business involves the export for resale of branded goods – such as clothing, shampoo and other personal care products – this could be a criminal offence and also actionable in civil law.
“Anyone who deals with the European Economic Area will need to be extra careful post-Brexit,” said Susan who heads Clarke Willmott’s national, multi-discipline data protection team.
“For the last 25 years, people have been confident that if they bought genuine branded goods in the UK, they’ve been free to export them to the other EEA countries without risk of action.
“That is set to change.”
Ongoing UK recognition of the EEA regional exhaustion area will ensure that parallel imports of goods, such as clothing and pharmaceuticals, will continue from the EEA to the UK.
So, from an intellectual property point of view, there will be no change for the importation of goods into the UK from the EEA.
However, restrictions may be placed upon the parallel import of goods from the UK to the EEA as such restrictions are not within the control of the UK.
“In these circumstances, businesses may need the IP rights-owner’s consent to export intellectual property-protected goods that have been legitimately put on the market in the UK into the EEA,” added Susan.”
The warning follows recent guidance from the UK Intellectual Property Office on the ‘exhaustion’ of intellectual property rights in the event the UK leaves the European Union without a deal.
‘Exhaustion’ refers to the loss of the right to control distribution and resale of a product after it has been placed on the market within a specified territory by, or with the permission of, the right holder.
Clarke Willmott’s intellectual property team works with world famous brands including Canon, ghd, Fred Perry and UGG, and start-ups and with clients including app and software developers, software consultancy businesses, franchisors and franchisees.