What now for Intellectual Property in Europe after UK parliament rejects Brexit deal?
As you will no doubt know, the UK parliament rejected yesterday the draft Withdrawal Agreement which had provisionally been agreed between the UK government and the EU on 14 November 2018.
This opens a period of political uncertainty in the next few months while all options are explored, particularly as the UK is currently expected to leave the EU on 29 March 2019.
Given the uncertainties and to assist you in your planning in IP matters, we set out below the possible impact on IP rights in the run-up to Brexit and thereafter, and the practical steps you can take to mitigate some of those uncertainties. However, we can be sure of the following:
+ Patent prosecution in Europe will not be affected by Brexit
+ Owners of existing EU trade mark and design registrations will see those rights protected in the UK irrespective of when or in what circumstances Brexit takes place
+ Owners of pending EU trade and design applications will have a nine-month period from the date of Brexit in which to seek protection of the same rights in the UK
+ Abel & Imray will continue to represent clients in respect of all European IP rights and in particular will continue to represent clients before the EUIPO and EPO
EU Registrations will continue to be protected in the UK by equivalent rights
Even in the event of a “no-deal” outcome, the UK Government has confirmed that it will take steps to ensure that all EU trade marks and designs registered at the time of Brexit will continue to be protected and enforceable in the UK by way of equivalent UK trade mark and design registrations. Those new UK rights will be created “at minimal administrative burden” for the owners.
Accordingly, there is accordingly no need to file new UK applications corresponding to EU registrations at the moment, although that might be something to be considered if one or more of the following factors apply:
+ the mark is of particular importance, i.e. it is the house mark
+ the UK represents a major part of the European market under the mark and/or it is likely that the mark will need to be enforced in the UK against third parties
+ the mark is currently only protected as an EUTM and is registered with the UK customs authorities to track counterfeit goods coming into the UK market
+ the mark is protected in the EU and is not used in the UK but where you still have an intention to use in the UK in the future
We would also recommend for the time being renewing UK national registrations for which ‘seniority’ has been claimed at the EUIPO.
Pending EU Applications
For EU trade mark and design applications which are pending at the date of Brexit, there will be a nine-month period until following Brexit in which the applicant can file for the same mark or design in the UK, even if there is no deal between the UK and the EU. The resulting UK application will retain the original filing date of the EU application and, where appropriate, the priority date.
Marks and Designs protected at the EU under the Madrid and Hague systems
The UK will seek to provide in the UK rights equivalent to marks and designs currently protected in the EU under the Madrid or Hague systems. For new Madrid and Hague applications, we would recommend that clients add the UK as a separate designation from now on in view of the relatively low cost of doing that.
Agreements and licences relating to EU marks and designs
What should I do about agreements and licences involving EU marks?
Many clients will have trade mark agreements with third parties, including co-existence agreements, and/or licences having effect in the EU. Similarly, clients may have been involved in litigation relating to EU marks which gave rise to court orders and/or settlement agreements having effect in the EU and the UK.
It is advisable to review such agreements, orders and licences to determine whether they now need to be amended and/or supplemented to continue to give effect to the will of the parties and/or the courts.
The European Patent Office is not an EU organ.
The EPO was founded by an international treaty (the European Patent Convention), accession to which is entirely separate to EU membership. European patents already cover countries such as Iceland and Turkey which are not EU members and regardless of the outcome of Brexit, European Patents will continue seamlessly to cover the UK. Abel & Imray’s European Patent Attorneys will continue as representatives before the European Patent Office.
Supplementary Protection Certificates
Supplementary Protection Certificates (SPCs) are granted for pharmaceutical and agrochemical products in order to provide a monopoly extension as compensation for the length of time taken to obtain marketing approval for such products. They are granted under EU-regulations but are separate national rights in each country. The UK government has stated that whatever form Brexit takes the SPC regulations will be incorporated into UK domestic law and so existing UK SPCs and applications for SPCs will remain in place following Brexit and SPC protection will continue to be available in the UK.
Unitary Patent and Unified Patent Court (UPC)
Collectively known as the “unitary patent package”, this new system is an EU initiative for EU-wide validation of European patents and for pan-EU patent litigation.
The UK will be unable to participate in this new system without an agreement from the EU. However, it should be noted that there are serious doubts as to whether this new system will ever come into effect because the German Constitutional Court is reviewing the legality of German ratification of the relevant treaties. If the unitary patent package does come into effect, Abel & Imray’s attorneys will be able to represent clients before the new Court by virtue of their EPO and UK qualifications regardless of whether or not the UK participates in the new system.
Whatever happens in the next few months, Abel & Imray will continue to represent its clients before the EUIPO. In that respect, we have set up a new office in Spain which will be able to provide seamless representation before the EUIPO to all of our clients in all trade mark and design matters.
We shall of course keep you updated as and when we have further news to report. If you have any questions in the meantime, please get in touch with your usual Abel & Imray contact, or e-mail: email@example.com