Consequences of BREXIT on IP rights
As a consequence of the UK vote in favour of BREXIT, many questions can raise regarding the impact of its withdrawal from the European Union on Intellectual Property rights. To shed a light on this matter, LAVOIX proposes a short analysis of the situation.
What will be the consequences of BREXIT on IP rights?
First of all, the UK has to implement the procedure described in Article 50 of the Lisbon Treaty which enables any EU state member to disengage from the Union. Only the concerned state can avail this article. The process can be long both for the disengagement and for the negotiations between the UK and the EU authorities. In any case, a two years deadline (conditionally renewable in case of unanimous approval of the other states) is set up starting at the disengagement notification.
Concerning EU Trade Marks and designs, in theory, granted titles and pending applications should still benefit from the protection in the UK.
Once the disengagement process of the UK is formalised, it will no longer be the case. However, it is very likely that there will be some provisions to transform prior rights, as it occurred in the past, e.g. following German reunification, or the creation of the Eastern Europe Republics.
Nevertheless, as a precaution measure, we recommend renewing Trade Marks and Designs which would still designate the UK via the national or international route, even if their seniority has been claimed in the European Union Trademark.
Once the UK will have notified its disengagement (Article 50), and if this territory is of your interest, it will be necessary to review the consequences upon your protection in this country, and to take if need be, the necessary steps, on which we will be glad to assist and advise you.
As to the use of Trade Marks, our recommendation is to have a quick look on your IP rights designating the European Union, so that the EU Trademark which would not be used in the UK should promptly be, in order to avoid a non-use cancellation action, after the likely transformation of the IP rights in the UK. Indeed, in such a proceeding, it will no longer be possible to claim the use of the Trademark in any EU state other than the UK.
In contractual terms, LAVOIX teams are ready to review the contracts with effects in the UK and to take the necessary steps relating to the movement of goods, etc.
Concerning the patents and european patent applications, the situation remains unchanged as the European Patent Office (EPO) is an entity distinct from the EU.
Finally, the entry into force of the Unitary Patent (UP) and the Unified Patent Court (UPC) announced for 2017 should be delayed, pending the eventual ratification of the UPC agreement by the UK before it leaves the EU, or its effective withdrawal. Even if the UK would ratify the UPC agreement, its withdrawal would raise judicial issues that will have to be addressed by The Member States and the UK during the disengagement negotiations. The entry into force of both the UP and the UPC is anew in the hands of the EU and UK politicians.
Publication date: July 2016