Brexit : what we know about it

04 Aug Brexit : what we know about it

June 23, 2016: United Kingdom (UK) has voted to leave European Union (EU)

Consequences of this unprecedented situation are many, and some affect the right of industrial property. The impact should be quite limited in patent law but could be larger in Trade Mark and Design law, particularly because of the existence of unitary industrial property rights (the Community Trade Mark and the Community Design).

UK has not yet left EU and Article 50 of the EU Treaty stipulates a minimum of two years to complete the exit process. According to the experts, the exit process may take from 5 to 10 years.

1. Patents

 As the European Patent Office (EPO) is not a EU body, the Brexit does not affect European patents designating UK.

Community patent (unitary right) is not in force yet and may ultimately not cover UK.

Brexit may delay the implementation of the Unified Patent Court (UPC). indeed, UPC comes into effect once ratified by 13 EU member states including the 3 countries with the largest number of European designations in force. UK being part of these 3 countries, UK had to ratify, but in view of the Brexit, it remains to be seen what will happen next. No prediction can be made today concerning the impact of Brexit on the ratification process.

 2. Trade Mark and Design

UK trade marks and designs can be obtained through a national registration or an international registration designating UK, or through the corresponding unitary right (the Community Trade Mark and the Community Design). Brexit does not affect the rules related to national and international registration, but will have an impact on the Community Trade Mark and the Community Design.

2.1 Community Trade Mark

After actual exit of UK, Community Trade Mark will no longer have any effect in UK.  Several options can be considered, although no one is still preferred at the present time. One option may be the transformation of the Community Trade Mark into national Trade Mark as soon as UK actually exits from EU. Another option may be the transformation into national trade mark at the time of the next renewal deadline after actual exit of UK (not before two years).

Some commentators have also suggested a national re-registration process.

Uncertainty may appear in case of a Community Trade Mark that would be used only in UK. Will a use limited to UK be sufficient to maintain in force the Community Trade Mark for the whole territory?

In the meantime, we still recommend to register Community Trade Marks designating UK. Obviously, we will inform you on updates that may affect this strategy.

2.2 Community Design

Same comments and process applie for the Community design.

Your regular Patent and Trade Mark Attorneys at IPSILON remain at your disposal for any further details.