Brexit: Implications in Intellectual Property Rights

On June 23, 2016, the United Kingdom voted to leave the European Union ("Brexit").  The exact fate of the UK is still up for debate.  What the IP landscape looks like in the aftermath of a departure from the EU will depend on its future dealings with the EU and therefore Brexit will have a significant effect on intellectual property right-holders.  The UK will soon enter a negotiation period during which laws will be amended and enacted and international agreements will be negotiated.  The UK has many options including retaining membership of the European Economic Area (EEA) only, or joining European Free Trade Association (EFTA), or having a customs-only arrangement with the EU. 

European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs)

Prior to Brexit, the UK was part of the EU Trademark regime.  Brexit will likely have a major effect on EUTMs and RCDs, as it is unlikely that community rights will apply in a country that is not a party to the EU-wide regulations. 

Current EUTM and RCD holders may have to register for UK national trademarks and designs to preserve protection in the UK. A further concern for UK trademark proprietors is that existing registrations that have only, or primarily, been used in the UK, could be at risk of revocation for non-use in EU countries. New EUTM and RCD filings post-Brexit will not cover the UK. Applicants will have to apply for a separate UK national trademark or design.  

Significant additional issues could arise if the UK does not join the EEA.  If the UK were not a member of the EEA, trademark owners would potentially be able to restrict trading of goods between the UK and EEA Member States. 

Europe-wide injunctions based on EUTM rights will no longer cover the UK.  

Patents and Supplementary Protection Certificates

Outside of the so-called community rights, Brexit will also have an effect on the UK patent system although the effect will be more limited.  This is because the European Patent Office (EPO) and the European Patent Convention, which are not EU organizations, govern the UK patent system.  Therefore, as long as the UK remains signatory to the EPO, it will be able to apply for patents in any of the member states of the EPO.  In addition, foreign EPO patents will be enforceable in the UK.  There are some areas of concern, one being Supplementary Protection Certificates (SPCs), which extend the life of a patent for inventions like pharmaceutical discoveries.  SPCs are governed by EU laws and therefore are now unenforceable in the UK.  Additionally, if the EU adopts a unitary patent system, the UK will likely not be part of it. 

Conclusion

The full ramifications of Brexit have yet to be seen.  It is apparent however that an important area of concern will be the practical management of their portfolios of registrations.  For example, trademark and design proprietors will need to be vigilant about establishing rights and use in both the UK. 

 

Authored by Karen Beckman