September 9, 2016
While IP legal practitioners were clambering over one another to give their own view of what a post-Brexit landscape might look like, the UK Intellectual Property Office (UKIPO) quietly issued their own statement early last month. While not particularly useful for crystal-ball gazing, the statement is a reminder to IP rights-holders not to panic in the interim while the UK remains a Member State.
Just as it is now, UK individuals and businesses will be able to register an EU trade mark in the post-Brexit system. Europe will continue to be a valuable market for UK businesses, and as such, an EU trade mark will remain a valuable tool for rights-holders seeking to protect and enforce their rights throughout the remaining European Member States. For the time being, of course, the UK remains a full member of the EU and therefore EU trade marks remain valid in the UK.
The UKIPO further confirmed that the government are exploring options, but gave no indicate on what measures are being taken.
Like trade marks, design law remains the same post-referendum and again the UKIPO confirmed that the government are exploring options for the best route forward.
Interestingly, the UKIPO reported that the government has made clear its intention to ratify the Hague Agreement in a national capacity. Currently, users of the Hague Agreement (a system by which a user can submit a single design application and designate any number of territories that are party to the Agreement) must designate the EU if they want to ensure UK coverage, by virtue of the UK’s membership in the European Union. Without ratification, the Hague system would have been closed to UK nationals post-Brexit. According to the UKIPO, they expect this service to launch within the next year.
In their statement, the UKIPO diplomatically skirted away from the issue of what the future holds for the great European patent project, being the unitary patent/Unified Patent Court. While the unitary patent now seems further from realisation than ever before, it is important to remember that the UK is a contracting state to the European Patent Convention, which will not be impacted by Brexit, ensuring that EP patents with UK designations will remain unaffected.
UK intellectual property law is deeply entangled with European law, and none more so than with copyright. Many of the key copyright provisions we use and rely upon are pieces of European law with ‘direct effect’ in the UK, or in many cases, national law has been amended to reflect European law. What the future holds, at the moment, is anyone’s guess, but we anticipate new or transitional laws being enacted which may resemble some of the law that the EU has worked hard to harmonise. In the meantime, the UKIPO confirms, UK copyright laws will continue to comply with EU law.
Anecdotally, we understand that the question of what will happen to EU rights once the UK leaves the EU is still a long way down a very long list of questions. While this might not provide proprietors of EU trade marks and Community Registered Designs with much confidence for the time being, practitioners generally agree that it seems unlikely that nothing will happen, which would effectively leave high and dry those EU rights-holders that do not have equivalent UK rights. What is unclear, however, is the practicalities of such a change. Will an EU trade mark / Community Registered Design automatically convert into the equivalent UK rights (whilst retaining priority), or will there be some administrative burden on the rights-holders (and/or their legal advisors)? Will there be additional fees for rights-holders to pay? Would EU trade marks be subject to revocation in instances where they have been primarily used in the UK?
It is not surprising the UKIPO does not have all the answers yet – it is early days after all. But as we await further information from the UKIPO, EU rights-holders (and those applying now for EU rights) should consider their European portfolios, their future UK coverage, and any commercial agreements which have territorial provisions (such as licence agreements), sooner rather than later to understand the potential impact of the inevitable change.
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