Notwithstanding the somewhat surprising outcome of the Brexit
vote, there is no reason to panic. UK and European
IP experts agree that the Brexit will have no immediate
impact on any European IP rights. In particular, the UK is
and will remain a member of the EU for at least two years, meaning
that existing enforcement and validity regimes are still in place.
Moreover, IP owners will have several years to plan for any changes
that do occur.
European Patents after Brexit Remain Unchanged
European experts also agree that the Brexit will have
virtually no impact on patent rights in either
Europe or in the UK. European patent applications are filed through
the European Patent Office (EPO), which is completely
separate from the EU and will not be impacted. Moreover,
national patent filings in the UK or other European states will
not be affected, whether they are direct
filings, PCT national stage entries, or validations of European
The biggest impact of Brexit will likely be on the forthcoming
Unitary Patent and Unified Patent Court (UPC) system. Although not
yet in force, the UPC system is designed to create a single
European Patent that would be enforceable throughout Europe via
specialized courts sitting in different countries. At the very
least, Brexit may delay the implementation of the UPC, and
European experts note that there is a real risk that the UPC will
either be weakened or may never actually come into force, at least
under the current UPC regulatory framework.
European Trademarks and Community Designs – Prepare for
Separate UK Filings
EU trademarks and registered Community designs remain
valid in the UK, and there is no immediate loss of IP
protection. Since the introduction of the European Community
trademark system, Canadian businesses have been able to obtain a
single trademark registration covering the current 28 member
countries of the EU. This has offered enormous savings in cost and
efficiency, making EU trademark filings a key step in the creation
of a global trademark portfolio. The Brexit vote has generated a
flurry of questions, and there are three important points for
Canadian businesses to keep in mind:
Existing EU trademark registrations continue to be
valid and fully enforceable throughout the EU, including
the UK, and will be so at least until the
resolutionof the UK's exit terms
under the Lisbon Treaty.
Going forward, to obtain trademark or design protection in
both the UK and the remaining EU member countries,
separate applications in the UK and EU should be filed.
For existing EU trademark registrations, some
commentators are suggesting that it may become
possible for EU registrants to maintain uninterrupted rights in the
UK with a new UK registration that protects the existing priority
claim. This will only be known with certainty once the detailed
exit terms are finalized.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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