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How an exit from the European Union by the UK might affect your Intellectual Property Rights

“BREXIT” is no doubt going to be one of the words added to the Oxford English Dictionary for 2016 and as such will not be protectable as a Registered Trade Mark.  But if “BREXIT” were registrable as a trade mark, the burning question would be “where to register it?”.

We have been in touch via our local MP with Baroness Neville-Rolfe of the Department for Business Innovation and Skills concerning the effect of a possible exit from the European Union on Intellectual Property Rights.  It appears that at present, no contingency plans are in place.

Our analysis is that current patent rights will be unaffected, since patents obtained either nationally or via the EP(UK) route will remain enforceable in the UK.  Even after “BREXIT”, it is expected that the UK will remain a member of the European patent system since this currently covers countries both inside and outside the EU.  However, when the European Unitary Patent comes into force (believed likely in 2017), the UK could not be part of that system if it is not in the EU, and applicants would therefore need to continue to gain patent protection in the UK using the present routes.

However, both the European Union Trade Mark and the Registered Community Design are “unitary” rights.  This means that they automatically extend to the whole of the European Union, whatever size the European Union might be.

Therefore, if we do “BREXIT” and David Cameron invokes Article 50 of the Treaty on the European Union (the Lisbon Treaty), once the two year period specified by Article 50 has elapsed, European Union Trade Marks and Registered Community Designs will no longer be in force in the UK.  This would mean that rights holders trading in the UK and relying on registrations in the European Union for their Trade Marks and Designs would no longer have registered cover in the UK.

Before panic sets in, we should say that we think it is highly likely that transitional provisions would be put in place to enable European Union Trade Marks and Registered Community Designs to be protected in the UK, either through automatic extension by UK statute (perhaps until the next renewal deadline) or by allowing a period to file new applications which would be accorded an effective date of protection of the filing date of the original European Union Applications (i.e. re-registration).

In the case of Registered Community Designs, we think it likely that transitional provisions will be put in place allowing automatic extension or re-registration, due to the novelty requirements for a Design.  If the original EU filing date is not maintained, it may be too late to re-file and obtain valid national design protection in the UK because the design will have been published as part of the EU registration process.  This would represent a serious loss of IP rights and we would expect the UK Government to ensure this does not happen.

In the case of European Union Trade Marks, there are no novelty requirements and validity is not affected by an applicant’s own prior applications elsewhere.  Therefore, while the loss of the original EU filing date might not be fatal to a later national application in the UK, there would still be a loss of protection in the UK for a period and the trade mark rights of others in this intervening time could come into play and create complications.  Therefore again, we expect that the UK Government would put in place similar automatic extension or re-registration transitional provisions for registered and pending European Union Trade Marks.

However, all of this is theoretical until the UK Government confirms what the transitional provisions will be in the case of a UK exit from the EU.  We do not expect they will do this before 23 June, but please contact us if you have any specific questions.  If the vote is to leave the EU, we will keep you updated after 24 June as soon as we know more.