- BREXIT -
- Impact on IP rights in the EU -
On June 23, 2016, a slim majority of the British voters decided against the further stay of the UK in the EU (Brexit).
Summary of Recommendations:
• To be on the safe side, already existing national UK trademarks should be renewed, rather than relying on seniority claims in European Union marks.
• Because EU marks and EU designs will no longer enjoy protection in the UK, we recommend to start filing important IP rights as national rights in the UK as from now.
• Prior right agreements, licensing and other agreements should be reviewed, in particular with respect to their geographical scope of protection.
1. How does the Brexit impact your IP rights?
The UK will not officially leave the EU before October 2018, most likely even later. As a first step, the UK has to notify the EU of its decision. Afterwards, the negotiations between the UK and the EU start, which can last for a maximum time of two years.
Consequently, nothing will change before the official leave of the UK. What happens afterwards, however, is still open. The outcome depends on the contracts between the UK and the EU and will also be determined by UK national legislation.
For the time after the leave of the UK, the following has to be considered:
2. EU trademarks and EU designs after the leave of the UK:
New EU marks and EU designs will no longer cover the UK. For UK protection, a national application will be needed.
What happens to existing EU marks and designs is still unclear. They will no longer be protected in the UK, but probably existing EU rights may be converted into corresponding national rights in the UK (upon request and fee payment).
• Seniority: Claiming seniority of an early application date of a national UK trademark for an EU mark will no longer be allowed. We recommend renewing national UK marks rather than relying on seniority claims.
• Prior right agreements, licensing and other agreements: These agreements should be reviewed, in particular with respect to their geographical scope of protection.
3. Unitary patent after the leave of the UK:
The Unitary patent including the Unified Patent Court, which the EU is planning to introduce, will likely be delayed. It would appear that the UK, as non-EU state, cannot be part of the unitary patent system, although ideas are already being discussed to find a solution that the UK can nevertheless stay.
We are carefully watching the developments around the Brexit and will advise you accordingly. Thanks to F. Peter Müller’s recently ended presidency of ECTA (European Communities Trademark Association) and his nomination as member of the Advisory Boards of EUIPO (European Union Intellectual Property Office), we are always up to date on matters of European patent and trademark law.
After all we believe that the changes for proprietors of IP rights will be manageable, and we trust that the UK together with the EU will find the best possible solutions.
We are happy to answer all your questions regarding your IP rights and the Brexit, just contact us!
Your Müller Schupfner & Partner Team