Posted by Jessica Bent, Partner
Brexit & BrexIP– the implications for Intellectual Property
Friday’s result on the referendum came as a surprise to many, if not to all. As I write, the implications are being felt around the globe and of course the true implications will not be felt for some time to come. In the meantime, no doubt lots of discussions are being held behind closed doors as to how the UK can come through this, relatively unscathed, and at the same time, leaders of countries in the rest of the EU are undoubtedly working out how to make it tough for the UK – or make it appear tough for the UK – so as to deter other EU member nations’ political parties wanting to hot foot it after the UK. Damage limitation will be the name of the game.
We should remember that nothing changes for now. Article 50 of the Lisbon Treaty – the article which permits an exit by an EU member state from the EU, has not been implemented. For this to happen, the UK has to notify. Until then, no change – and the existing laws, free movement of goods and people, remain.
However, for us IP lawyers, we are already getting calls from clients – “How about my IP?” It won’t be Osborne’s, Cameron’s or Johnson’s number one priority of course, but we can look now at what some of the implications might be.
Many businesses have taken advantage of the European Union trade mark – the EUTM (previously called the community trade mark). This provides unitary protection throughout the whole EU in one single trade mark application. “Unitary” is the sting in the tail here – as we are not talking separate trade marks. Thus on an exit by the UK from the EU, an EUTM will no longer apply in the UK, unless a conversion process is put in place. We would fully expect a conversion process to apply, so that existing EUTM’s could be converted into national UK rights while also remaining in force for the rest of the EU. However we don’t know how that conversion would work, what examination might apply by the Intellectual Property Office in respect of such trade marks, and what the costs would be. We would expect some cost, but it might well be minimal.
As with EUTM’s, EU registered designs (EURCDs) are unitary rights. Therefore the same issue applies as with EUTMs. Again we would expect some form of conversion, but what form this would take, and what examination or at what cost, we do not know.
The UK is a member of the European Patent Organisation, however as this is not an organisation which is part of the EU, Brexit will not impact on this or on European patents. However the long-awaited Unitary Patent Court Agreement, and that the UK will be one of the seats of the Unitary Patent Court, is likely to be affected, and delayed by Brexit. The Unitary Patent will be a single patent which applies across the whole of the EU member states, so in the same way that EUTM’s and EURCD’s will be affected, so would the Unitary Patent. As the Unitary Patent is not currently in force, and the related laws have not been ratified, a possible consequence is that the UK would not be part of the Unitary Patent, and consequently a Unitary Patent Court would not be situated in the UK.
Recommended best practice
For business owners who are currently considering filing new EUTMs or RCDs, we would recommend that if the UK is an important market, you file for a UK trade mark or a UK registered design as the case may be. If you also trade in the rest of the EU and this is an important market for you, you will need to file an EUTM (or EURCD as the case may be).
For existing owners of EUTMs or EURCDs, if the UK is an important market, we would suggest in the medium term you consider separately applying for UK trade mark or UK registered design protection. This will give you the assurance that you have enforceable UK rights and you are not relying on the conversion process, as and when that happens. You could initially wait and see to determine what the conversion process will look like and then, if this is not fully determined or does not provide correct reassurance, that you then instruct separate UK applications.
Registered design applications have to meet a requirement of novelty in the both the UK and EU for such applications, and of course the longer you wait, the greater the chance that such an application would not be novel (either because you have sold or someone else has developed a competing product). Therefore for a registered design application, it would be wise to consider whether to apply for a UK registered design application in tandem with a EURCD sooner rather than later.
We will post updates on Brexit and its impact on IP as the consequences become clearer, in the meantime if you have any questions on such matters, please contact your usual adviser in our Technology & Media team or Jessica Bent.
Related: See Nicola Cutler’s blog, Brexit: the impact on UK and cross-European disputes
For more information on how Brexit could affect your business from an IP perspective, contact Jessica Bent or another member of our Technology & Media team.
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