On June 23rd the United Kingdom (UK)1 decided, by
means of a referendum, to exit from the European Union. This
decision is known as "Brexit". According to Art. 50 of
the Treaty on European Union, the UK must notify the European
Council – which for this purpose represents the EU – of
its intention to exit, after which the parties will negotiate an
agreement setting out the arrangements of that withdrawal and of
the future relationship between the UK and the EU. In practice, the
UK will stop being a member of the EU once this agreement enters
into force or, in case the parties are not able to reach such
agreement, two years as of the date in which the notification is
made2 , unless the parties unanimously agree to extend
the term for negotiations. During those two years as of the date of
notification, the UK will remain a member of the EU and,
consequently, the EU regulations, including those regarding
intellectual property rights, will remain in force in the UK. In
other words, Brexit will not have an immediate effect on
intellectual property rights granted/recognized by the EU.
These are the principal effects that Brexit will have on
intellectual property rights, once it occurs:
Union trademarks – EUTM – will cease to apply in the
UK. The owners of these rights will have to use the transitional
mechanisms that the UK decides to implement in order to allow for
the conversion of existing EUTM into corresponding national UK
rights. EUTM will continue to apply in the rest of the EU member
states.It is important to consider the effect that the requisite of
use may have with regards to EUTM which are used solely in the UK,
because this use will no longer be relevant for maintaining those
registrations. The owners of these EUTM must adopt the necessary
measures in order to be able to defend their registrations from
future non-use cancellation actions, and consider, for example,
using their EUTMs in another member state of the EU.If the UK is an
important market for the owner of the EUTM, it is advisable to
consider the possibility of securing its protection separately as
national UK trademarks, so that its rights are executable
immediately in this state, avoiding the uncertainty regarding their
protection, since the transitional measures to extend protection of
EUTM to the UK are yet to be defined.
European Patent Office (EPO) is not an institution of the European
Union, consequently, Brexit will have no effect on European
Patents. The UK will remain a member of the Patent Cooperation
Treaty (PCT) and of the European Patent Convention (EPC).However,
there is uncertainty as to the participation of the UK in the
European Unitary Patent system, which is slated to take effect in
2017. This is a simplified system which allows a patent owner to
obtain a uniform protection of a patent in all the member states of
the EU, based on the filing of a single patent application, for
which a single fee regime would be applicable and over which a
single court would have jurisdiction: The Unified Patent Court
(UPC). In principle, the UK would be able to ratify the respective
treaty and participate in the UPS during the two years prior to its
exit from the EU.
Designs: As with the
EUTM, EU Designs will remain valid in the UK until Brexit occurs.
The UK will likely implement transitional mechanisms which will
allow transforming EU Designs in national registrations.If the
protection of these rights in the UK has a special relevance for
their owner, it is advisable to analyze the possibility of applying
for national protection while the transitional mechanisms that will
enable their local protection are defined.
in the UK is governed by national regulations, so even though these
regulations are harmonized with EU regulations, it will not suffer
changes as a consequence of Brexit.
Finally, with regards to the above mentioned intellectual
property rights, it is important to consider revising agreements,
such as license agreements, in which they are included and which
have effect in the EU, because it may be necessary to make
adjustments in order to clarify their territorial scope of
1. The UK comprises four countries: England, Scotland,
Wales and Northern Ireland.
2. The UK has not made this notification yet, so the 2
years' term for its exit remains undetermined.
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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