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10 August 2016
On 23 June 2016, the British people voted in a referendum on whether the UK should remain a member of the European Union. Just under 52% of voters voted to leave the EU, against just over 48% who voted that the UK should remain part of the EU. As a result, the UK will in due course begin the formal process of leaving the EU, often referred to as “Brexit”. That process is likely to take several years to complete. In the meantime the UK will remain a part of the EU, with all of the rights and obligations that entails including in the field of intellectual property. The message for the time being is therefore very much “business as usual”. Nothing will change in the immediate future. We have summarised here the likely impact of Brexit on the various different IP rights in Europe.
European patents – Unchanged
The European Patent Convention (EPC) is not directly linked to the European Union, but is instead a multilateral treaty agreed by the 38 participating member states, and likewise the European Patent Office (EPO) is independent of the EU. This means that the process of applying for and obtaining European patents will not change, regardless of the UK’s eventual status if and when Brexit is implemented. European patent applications will still be filed and prosecuted centrally at the EPO, before being validated, once granted, in the EPC member states in which patent protection is desired.
Unitary Patent and Unified Patent Court (Unitary Patent Package)
Although the launch of the long-awaited Unitary Patent Package (UPP) is currently being delayed by a German constitutional complaint, the UK has been continuing with the project since the EU referendum. Despite predictions in some quarters that the UK would withdraw from the agreement in the light of Brexit, the UK government confounded those who suggested that Brexit would cause the project to collapse by ratifying the treaties behind UPP. Whilst it was originally envisaged that all UPP member states would be EU members, the UK has decided to continue to participate. The legal options for maintaining the UK in the UPP in the long term are still being worked through but the ratification signals the UK government’s clear intention to support the UPP project.
Regardless of the eventual outcome Withers & Rogers will have the right to seek Unitary Patents via the European Patent Office and to represent clients before the Unified Patent Court.
European Union registered trade marks – Minor changes
As European Union trade marks are EU-wide rights, once the UK has left the EU, European Union trade mark registrations will likely cease to have effect in the UK, and any new European Union trade mark applications will cover only the remaining EU member states.
It is highly probable that the UK government will enact legislation that will permit European Union trade mark registrations that are in force at the time of the UK’s exit from the EU to be extended into the UK, either automatically or on request, so that pre-existing trade mark rights will not be lost.
After the UK leaves the EU, in order to obtain registered trade marks covering the remaining EU member states and the UK, it will be necessary to file both a UK national trade mark application and a European Union trade mark application, either as individual applications or through the International trade mark registration system. UK national trade mark law is closely aligned with EU trade mark law, in terms of the substantive requirements for registration and the protection conferred by a trade mark registration, and also in terms of the duration of trade mark registrations, so aside from the inconvenience of having to file a UK trade mark application in addition to a European Union application, trade mark holders should not be disadvantaged by the change.
European Community registered designs – Minor changes
Like European Union trade marks, European Community registered designs are EU-wide rights. Once the UK leaves the EU, European Community design registrations will cease to have effect in the UK, and any new European Community design applications will cover only the remaining EU member states.
Again, it is highly probable that the UK government will enact legislation that will permit European Community design registrations that are in force at the time of the UK’s exit from the
EU to be extended into the UK, either automatically or on request, so that pre-existing registered design rights will not be lost.
In order to obtain registered design protection covering the remaining EU member states and the UK post-Brexit, it will be necessary to file both a UK national design application and a European Community design application. The UK is expected to join the Hague system for International design registrations in 2016, so UK and EU-wide design protection could also be obtained by that route. As with trade marks, UK national design law is closely aligned with EU design law, so aside from the inconvenience of having to file a UK design application in addition to a European Community application, design holders should not be disadvantaged by the change.
Intellectual property rights holders will not see any immediate change as a result of the UK’s vote to leave the EU, and even once the formal process of leaving the EU has been completed the effects of Brexit will probably require only small changes to European patent, trade mark and design filing policies.
We will of course continue to provide updates on the implications of Brexit on IP rights holders. As a European IP firm with offices in both the UK and continental Europe, we are ideally placed to continue to assist our clients throughout the world in obtaining and defending the full range of IP rights in Europe and elsewhere.