After the recent referendum in the UK that took place on 23
June 2016, many questions have arisen regarding the destiny of
European IP rights, such as
EU-Trademarks and Community Designs.
At the current state, it is yet impossible to give a precise
answer. It is unclear what exactly will happen. After the
referendum, the British government should initiate the exit
procedure by triggering Article 50 of the Lisbon Treaty. This
article rules the procedure on how a EU member state can leave the
European Union. Once the British government has done that, the UK
will enter into negotiations with the European Union, during which
they should come to an agreement about the legal consequences of
the UK exit. Amongst those legal consequences are the
destinies of the European IP rights.
There are different possibilities, how an exit agreement could
handle IP rights. For EU-Trademarks and Community Designs, which
currently cover the territory of the UK as EU member, one of the
following hypothetical scenarios is most likely:
1. Territorial restriction
That means, from the moment on that the UK exits the European
Union, all the EU-Trademarks and Community Designs will not be
valid in the UK anymore. All new registrations will not include the
In that case trademark or design owners would have to register
for a national trademark or design in the UK, in order to obtain
protection in the UK territory. This would probably imply to loose
the earlier date of the registration in the European Union, so that
the protection in the UK would only start with the new registration
2. Interim solutions
That means, EU-trademarks or Community Designs that are already
registered will still be valid in the UK, either by force of their
EU-registration or alternatively by means of a transformation into
a national UK trademark or design with the validity of the date of
the original registration in the European Union.
For all EU-Trademark that will be registered after the UK exit,
the UK territory would not be included anymore. Renewals of
EU-Trademarks or Community Designs would probably not include the
3. Special Status for the UK
That means, the UK remains part of the EU-Trademark agreement
and the exit of the UK from the EU changes nothing for European IP
rights such as EU-Trademarks or Community Designs.
Of course it is possible, that an exit agreement might come up
with a different solution and it could also well be, that
EU-Trademarks and Community Designs will be treated
differently. Due to their different protection period and the
fact that the possibility to renew a design is limited, whereas the
possibility to renew a trademark is not, the evaluation of what the
best solution is might not be the same.
We will monitor the process of the UK exit from the EU closely
and we will keep you informed about any new developments or
tendencies. As soon as it is foreseeable, which way a solution in
the exit agreement between the UK and the EU will take, we will be
able to develop a strategy for you, to safeguard your IP rights in
the best possible way.
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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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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