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16 January 2019
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 began the formal process of leaving the EU, often referred to as “Brexit”, on 29 March 2017. That length of that process will depend on the nature of any withdraw agreements, transition periods or extensions that are agreed upon, and will probably take 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”. 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 UK government indicated in its White paper in July 2018 that it “intends to explore staying in the Court and unitary patent system after the UK leaves the EU”.
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 – Continued Protection
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.
The UK government has indicated that even if there are no deals with the EU they 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, with a “minimal administrative burden”, 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, and renew, 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 – Continued Protection
Like European Union trade marks, European Community registered designs are EU-wide rights. Once the UK leaves the EU, European Community design registrations will likely cease to have effect in the UK, and any new European Community design applications will cover only the remaining EU member states.
Again, the UK government has indicated that even if there are no deals with the EU they 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, with a “minimal administrative burden”, 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 probably be necessary to file both a UK national design application and a European Community design application. The UK joined the Hague system for International design registrations in March 2018, 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, and renew, a UK design application in addition to a European Community application, design holders should not be disadvantaged by the change.
Pending EU Applications
For applications for EU trade marks or Community registered designs which are still pending when the primacy of EU law ends in the UK, applicants may then need to refile a separate UK application in order to cover the UK. The UK Government have indicated that even if there are no deals with the EU (such that the UK exits as early as 29 March 2019) they will enact legislation that will give applications a nine-month window to file a UK application and still keep the filing date of the pending EU application.
Intellectual property rights holders have not yet seen 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.