Brexit will have an effect on intellectual property rights across Europe. However, the effect may not be as significant as you might think. Also, it is likely that leaving the EU will take several years and so no immediate changes will take place. Some of the potential ramifications for the intellectual property world are explored below.
The primary functions of the UK Intellectual Property Office (UKIPO) of granting UK patents and registering UK designs and trade marks will continue unchanged.
"The European Patent Office (EPO) is not an EU institution and the prosecution of European patents and the EPO will be effectively unchanged."
The rights of representation at the EPO of UK-based European Patent Attorneys will remain the same and it will continue to be possible to designate the UK on European Patents in the same way as for other non-EU EPC-contracting states, such as Norway and Switzerland. Abel & Imray have had a presence in Munich for over 35 years, and we will continue to represent clients in front of the EPO in our usual way.
The UK Government has announced that it will press ahead with ratifying the agreement needed to bring the Unitary Patent system into force. After the UK has left the EU, It is unclear whether or not that system will continue to extend to the UK; if it does not, the UK’s national court system will have sole jurisdiction over UK patent disputes. Whatever happens, UK-based European Patent Attorneys will have the right to represent clients in the Unified Patent Court, if and when that system comes into force.
Supplementary Protection Certificates (SPCs) are important rights in the pharmaceutical and plant protection industries. SPCs are national rights that exist separately for each EU state. It is expected that the UK SPC regime will continue with little or no change of substance, though the link with the CJEU (the highest appeal court for SPC matters) will change.
The European Union Intellectual Property Office ("EUIPO") is an EU institution and so the eventual departure of the UK from the EU will have more impact on the EU Trade Marks and Designs.
"From the date of actual departure from the EU it will be necessary to seek protection in the UK for trade marks and designs separately from the EU."
The latest guidance published by the UKIPO is that, subject to the UK and the EU agreeing the terms of a Withdrawal Agreement, the UK will create 1.7 million comparable trade marks and designs in the UK corresponding to exisiting EU rights, automatically and free-of-charge.
In the event of a "hard", "no-deal" Brexit, the UKIPO's latest guidance is that, even in that scenario, the UK government aims to ensure continuity of protection and avoid the loss of trade mark and design rights currently protected at the EU.
"In the short term there is no need for any dramatic change in strategy for the protection of trade marks in the EU and UK."
While we do not advise at this stage that brand owners should systematically seek protection of their EU marks by way of new UK applications, they may wish to consider filing additional UK national applications for key trade marks of particular strategic importance.
Brand owners may wish to consider reviewing their renewal strategy with respect to seniority claims. Rights-holders who already own parallel UK and EU Registrations for the same trade mark, where the EU trade mark claims seniority from the UK Registration, would be well advised to continue to renew both parallel Registrations for the time being.
Although it seems from the UKIPO's latest guidance that EU designs will give rise to comparable UK design rights irrespctive of the terms of Brexit, the additional costs of protecting a design separately in the UK are quite low. In those circumstances and given the issues of novelty which affect designs (but not trade marks), clients might therefore seek to file for new designs both in the EU and in the UK from now on.
For a more detailed review see Brexit - Trade Marks Practical Effects.
The issues relating to the UK referendum vote are fluid and many questions will only be answered with certainty in due course. In the meantime, if you have any queries relating to Brexit, please do not hesitate to let us know by sending an e-mail to firstname.lastname@example.org or to your normal contact at the firm.
Similarly, as and when the UK government and the UKIPO issue formal consultation documents relating to the practical arrangements to be put in place, we will canvas your views and to help put them forward on these important matters. We are here to assist you in respect of all of your IP needs in the EU both now and in the future.