The current situation:
The EU has developed a system of pan-European intellectual property rights for trademarks and designs, allowing businesses to protect their ideas, inventions and designs by registering them at an EU level, rather than in each individual member state.
What might change?
The first point to note is that the vote itself doesn’t change any laws – in relation to intellectual property (IP) or otherwise. The UK is still in the EU, and all the current rules and systems still apply at this moment in time. The second point is that what will happen next in terms of the mechanics of our exit is still very uncertain.
- EU Trademarks (EUTMs)
There are a number of possibilities as to how things might work post exit for EU Trademarks. The UK could continue to remain part of the EU Trademark regime or we might decide that the regime would apply unilaterally to the UK, although neither of these solutions is without complications. The government may instead opt for the UK to revert to its own independent system.
As with EUTMs, Registered Community Designs (RCD) and Community Design Rights may no longer cover the UK after the UK leaves the EU.
The European patent system operates separately from the EU and so would, from a legal point of view, be unaffected by a Brexit. However, moves towards an EU-wide patent system (the Unitary Patent) would be affected by the UK’s exit because it would no longer be able to participate without changes to the existing legislation. It may be that the Unitary Patent project start date which most were predicting as 2017 is delayed.
What impact could this have on UK businesses?
Businesses could face challenges to their IP rights (whether or not with any merit) and may see the costs of fully protecting these increase if they have to register separate rights in the UK and the EU. Enforcement may also become more complicated and costly however most commentators are predicting a dual system is likely going forward. It is in both the UK’s and the EU’s interests to make registration and enforcements as easy as possible given the use of IP cross-border And, it is of course possible now to register separately in the UK and the EU but most people choose to take advantage of the single European protection to save time and costs.
What you need to be thinking about now:
Clients wanting to ensure protection of their most important trademarks in the UK might consider filing separately in the UK now, particularly if there are existing or likely future conflicts in the UK in relation to those rights. The issue of ensuring ongoing protection is similar for registered designs, and if no mechanism for the UK to continue to benefit from RCD protection is agreed between the UK and the EU, existing rights will have to be protected by a new separate application for a UK design right.
Most commentators believe that there will be a transitional regime to allow owners of EUTMs and Community Registered Designs to convert them into national trademarks in the UK, possibly whilst retaining the filing dates and priority dates from their European marks. When we spoke to the IPO office post-referendum they had not received the “flood” of applications or queries relating to re-registration that had been predicted by some. The position for Community Design Rights however may be different, so separate consideration should be given to re-registering design rights in the UK.
No action is required at the moment in relation to patents because, as mentioned above, existing European patents will continue to provide protection through the European Patent Office.
Additionally though, clients with IP licences should look at whether territories meant to include the UK are defined as the European Union as this will now require amendment. It may also be wise to ensure you are using your IP rights widely, preferably in one or more other EU countries in order to be able to demonstrate use in the EU.