Brexit and the potential impact on your Intellectual Property Rights

UK and Brexit legal issues
Helena Murgitroyd By Helena Peat, Trade Mark Attorney, Murgitroyd

14 May 2018

Now that the UK has voted to leave the EU, we face a period of legal uncertainty whilst our future relationship post-Brexit is decided.  With UK and EU law so intrinsically linked there are numerous topics currently under debate - with Intellectual Property (IP) a key talking point.

On 26 June 2016, the UK public voted to leave the EU.  A deadline is now looming -  29 March 2019 - when the UK will cease to be an EU member unless the draft Withdrawal Agreement is finalised and accepted by Parliament.

Of the IP rights that exist under the current system of UK protection, EU Trade Mark Registrations, Registered Community Designs and Unregistered Community Design Right stand to be most affected, each of these rights having an unitary effect across the entire EU, including, currently, the UK.

Potential impact on IP rights

There will be little change to patent protection which is granted as a bundle of national rights in selected countries of the European Patent Convention, rather than through a single EU-wide registration. Further, UK Trade Mark and Design registrations are not affected.

The current system of EU Trade Mark Registration and Registered Community Design has been an attractive one to a broad range of businesses seeking to protect their registered rights within the EU territory.  That means that all manner of businesses, large and small, could suffer the consequences of Brexit as regards the extent to which their brands are protected and enforceable in the UK.  This includes not only UK businesses, but all holders of EU Trade Mark and Design Registrations globally.

In fact UK businesses are the second highest filers of EU trade mark applications. So an important question for many UK businesses is:  “will my rights still be protected in the UK”?

The current post-Brexit position

Much is still in the air as regards the effect of EU rights in a post-Brexit UK.  The default position under current legislation is that, as of the March 2019 exit date, EU Registered Trade Marks and Community Designs will no longer extend to the UK - and so rights in the UK will be lost. It goes without saying that this would be a worst case scenario for the majority of EU rights holders.

However, in March 2018 the European Commission published a Draft Withdrawal Agreement, which strongly suggests that a more practical approach will prevail.  The proposed position, accepted by both parties, seems logical – the UK will recognise the UK part of an EU registration post-Brexit, without any re-examination.

In addition, the Draft proposes a transitional period, until 31 December 2020, before the new arrangements take effect.  On the face of it, a welcome solution to the current predicament and a best case scenario for owners of registered EU Trade Marks and Designs with interests in the UK.

The case for pending applications

It has also been agreed by the parties that any pending EU trade mark applications which have not secured registration by the end of the transition period (31 December 2020), will not automatically transform to a comparable UK registration. Instead the holder will be able to file for a UK application claiming a priority date from the original EU filing until 30 September 2021.

It is possible that an application which is filed now and subject to a long opposition could be pending at the end of the transition period. Given EU rights holders have paid application fees for the UK through an EU trade mark application, this is disappointing.

As such, whilst some progress does appear to have been made to the benefit of EU rights holders, the position will remain uncertain until an agreement on all Brexit-related issues is finalised.  Consequently, risks to EU right holders linger in the meantime, until we have further clarity.

Six actions to take now

Until an Agreement on all issues is finalised which confirms arrangements to the contrary, holders of EU registrations could be vulnerable to loss of rights in the UK. Necessarily, continuing to rely on such EU rights carries a level of risk to those who do not also hold separate UK registrations.

In terms of action to be taken at this stage to neutralise this risk, there is no “right” answer – all businesses are different, with different needs and priorities.

As one of the very few IP Attorney firms with well established offices throughout Europe, Murgitroyd is well placed to assist clients, big or small.  In general, we would recommend that businesses consider the following steps:

  • Check your portfolio – you may have sufficient protection in place, in particular if you already have UK registrations in parallel with broader EU rights.
  • Do not let existing UK rights lapse in favour of EU rights - renewal fees in the UK are low.
  • Consider filing UK applications for existing brands now where only EU registrations are currently in place, in particular for key brands where the UK is an important market.
  • Similarly, for new brands, consider filing applications separately in both the UK and EU, either at a national level, or via an international application under the Madrid Protocol for trade marks.
  • Review existing agreements and licences to ensure that they will remain in force after the withdrawal date.
  • If you have .eu registered domains, consider registering in other top level domains, such as .co.uk

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About the company

Murgitroyd is the specialist Intellectual Property partner of ICAS.  Murgitroyd has over 40 years of experience in supporting companies identify, secure and defend their intellectual property rights and assets. Murgitroyd has long established offices in Scotland, England and throughout Europe.

About the author

Helena Peat is a Trade Mark Attorney at Murgitroyd. She specialises in a wide range of trade mark matters, including clearance searching, trade mark filings and prosecution, UK and European oppositions and disputes, portfolio management, and changes of ownership.

This blog is one of a series of articles from our commercial partners.
The views expressed are those of the commercial partner and not necessarily those of ICAS.

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