On June 23rd, UK citizens voted to abandon (Brexit) the European Union (UE).
In the area of Industrial and Intellectual Property, most countries are directly affected by systems as the European Patents, the Community Trademarks, Designs and Plant Varieties rights, or domain names (.eu). These figures coexist in the European judicial system, and are strongly influenced by political changes. In addition to the current situation, it is important to consider projects of great significance, as the recently adoption of a directive setting out rules for the protection of trade secrets and confidential information of EU companies and also the Unitary Patent and Unified Patent Court.
A process of negotiation and adjustment of the system will start with multiple possibilities, including the United Kingdom to completely leave the European Union or to stay in the European Economic Area ("the Norwegian way"). Due to the many possible scenarios, it is important not to rush and be attentive to the next events.
Overall what seems clear is:
Impact on European Patents
The European Patent Convention is an international treaty. Therefore, UK leaving European Union will have no impact on the grant and validation of European patents, unless the UK also leaves the European Patent Convention.
Impact on Unitary Patent
A priori, the Unitary Patent will not cover the UK.
All EU Member states may ratify or accede to the Agreement. Entry into force for the first group requires ratification by Germany, UK, France and at least ten additional states. Once the UK leaves the EU, its ratification should be substituted by Italy, which did not originally join the enhanced co-operation measures but subsequently signed up the UPC agreement.
Regarding the biotech pharma section of the central division that should be installed in London, even in the unlikely event that UK ratifies the UPC-agreement and joins the UPC-system for European patents, the participating EU Member States will surely claim to relocate the section to a country within the EU.
All these changes will most probably result in a delay in the Unitary Patent system.
Impact on European Union trademarks (EUTM) and Community Designs (RCD)
The current registries are fully valid both in UK and across the rest of European Union, so that no change is currently required and no imminent decision needs to be taken, inasmuch there is no risk of loss of existing rights.
Before the EU and the UK reach an agreement on the conditions of the Brexit, it is appropriate to evaluate the level of protection of which the EUTM and RCD holders will enjoy from the conclusion of the agreement, as well as to design an adequate and proper protection strategy.
Nowadays we can only speculate. With UK leaving the European Union, the EUTM and RCD scope of protection is likely to completely exclude such territory. Therefore, whoever wants to protect his rights in both jurisdictions, will have to file two different applications.
Aiming to avoid any loss of rights, a transition period will probably be set in order to transform EUTM and RCD rights into UK national trademark and designs, guaranteeing the original filing date.
This matter, together with others – seniority of a previous UK right; revocation for lack of genuine use; power of representation of UK lawyers (in theory these lawyers will be prevented from acting before the EUIPO), validity of the use in UK of a EUTM, scope of protection, in UK and in EU, of unregistered rights, scope of protection of unregistered community design in UK, and so on – must be expressly regulated by mean of an agreement or treaty between the UE and the UK.
Considering the new broad horizon before us and answering the many questions received last week, Clarke, Modet & Cº created a group of specialists in Industrial Property in Europe (Expert Committee for European Affairs) that is closely following the Brexit process and is ready to give a coordinated response with a global vision to all your inquiries.
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.
