The Implications of “Brexit”

We now provide some initial commentary and guidance on the effects that the UK’s decision to leave the EU (so-called “Brexit”) might have on existing intellectual property (IP) rights, particularly EU trade mark and design registrations that will be impacted directly by the UK’s decision to leave the EU.

Our general advice at this stage is simple: it should be “business as usual” when it comes to IP and clients should continue to apply for patents, trade marks and designs as they would do normally.

European patents

The European patent system is completely independent of the EU. The UK will remain a member of both the European Patent Organisation and the World Intellectual Property Organization (WIPO) that handles International patent applications through the Patent Cooperation Treaty (PCT).

Most importantly, the decision to leave the EU will not affect the owners of European patents, nor restrict the ability of UK patent attorneys to represent applicants at the European Patent Office (EPO) in any way. Clients will continue to be able to file European and International patent applications as they have in the past.

Clients that are aware of the proposed Unitary Patent (UP) and the Unified Patent Court (UPC) should note that these proposals are likely to come into effect in due course, but they will not extend to the UK. The UP will provide a way of validating a granted European patent in all 25 participating EU member states by filing a full translation in an official language of a single EU member state (not being English) and paying a single fee. All clients will still have the option to make use of the UP if they wish to extend protection to the block of participating EU countries but if protection is needed in the UK, it will be necessary to validate in the UK separately as is done presently.

IP disputes involving UK national parts of granted European patents will not fall within the remit of the new UPC structure and will continue to be handled by the High Court, or the Intellectual Property Enterprise Court (IPEC) that provides a relatively low-cost forum that is particularly suitable for individuals and SMEs.

Trade marks

We are confident that a way will be provided for owners of existing EU registrations to convert or “re-register” their trade marks in the UK to provide uninterrupted protection here. We therefore continue to recommend that clients apply for an EU trade mark registration if it meets their current commercial needs.

Clients who own EU registrations will need to think carefully about whether or not to extend protection into the UK using such a “re-registration” process or risk being blocked from doing so in the future. It is not clear what effect such a “re-registration” process would have on existing IP licences, securities for IP rights, or on the requirement for a trade mark to be used in relation to the goods and/or services for which it is registered. We shall provide more information when the process has been announced. Owners who have, to date, relied on use of their trade mark in the UK to support an EU registration will need to make genuine use in at least one other EU member state in the future to avoid a risk of revocation of their EU registration for non-use.

As things stand currently, unless the UK becomes a member of the European Economic Area (EEA), UK attorneys will no longer be able to represent applicants at the European Union Intellectual Property Office (EUIPO). This is one area which we will be monitoring particularly closely and we will provide further information when we are able to do so.

The UK is already an individual member of the Madrid Protocol and clients with a UK registration or application will still be able to file International trade mark applications to extend protection to other countries, including the EU.

Designs

Again, we are confident that owners of existing EU registrations will be able to convert or “re-register” their designs in the UK.

Post-Brexit, a separate UK design registration will be needed. The UKIPO has recently consulted on changes to the fee structure for UK designs and is in the process of introducing a new on-line filing system, both of which should help to minimise the additional cost burden for applicants who want protection in both the UK and the EU. In practice, from 01 October the official fees for UK registered designs are likely to be very low and some clients might want to consider the option of dual protection even before Brexit takes effect. Please speak to us if you need more information.

The UK is not currently a member of the Hague Agreement (which governs International design applications) in its own right. But in January 2016 the UK Government announced its intention to join towards the end of 2016. Although there might now be some delay, it is clear that the UK Government is committed to membership and that, once implemented, applicants will be able to designate the UK in their International design applications.

Designers should continue to benefit from unregistered Community design rights until such time as the UK formally leaves the EU. The UK already provides similar protection for designs by means of UK unregistered design right and this will continue to be available as long as certain qualifying criteria are satisfied.

Copyright

Copyright is subject to domestic UK legislation. Although aspects of it are harmonized by EU legislation, there should not be any significant change.

Conclusion

In view of the present uncertainty about what post-Brexit model will be adopted, and the two-year (minimum) period that the exit negotiations are expected to take, it’s clear that there is no need for clients to take urgent or drastic steps. But it might be sensible for clients to start to think about which IP rights are likely to be most affected by Brexit, and what steps could be taken to try and improve their level of protection in the UK.

We will continue to provide updates as and when any significant developments happen. Meanwhile, please do not hesitate to contact us if you have any questions, or you need further advice or guidance.