The short answer is that the effect on patents will be
small and for designs and trademarks the effect will be more
significant, but that any change will not happen until the UK
actually leaves the EU, which is likely to take several
The historic vote in the UK to leave the EU will have very
wide-ranging implications but the UK will remain as a full member
of the EU while an exit package (a "Brexit") is
negotiated. That process, which is provided for by Article 50 of
the Treaty on European Union, is expected to take at least two
years, and could be much longer. Some of the potential
ramifications for the IP world are explored below.
The official position of the UK government in the lead-up to the
vote was that the official policy was to remain in the EU, and
therefore there would be no planning, at least in public, for the
event of the outcome being a vote to leave. There is currently no
official view of how the UK's relationship with the EU should
be structured, but given the huge importance of trade between the
UK and the EU to both sides it is in everyone's interest to
make sure the process is handled carefully and that a mutually
acceptable settlement is reached. We expect that the rights of IP
owners will be fully respected as any changes to the regime of IP
protection are implemented.
The primary functions of the UK Intellectual Property Office
(UKIPO) of granting UK patents and registering UK designs and
trademarks will continue unchanged. The European Patent Office
(EPO) is not an EU institution and the prosecution of European
patents at the EPO will also be effectively unchanged. The rights
of representation at the EPO of UK-based European Patent Attorneys
will remain the same and it will of course continue to be possible to designate the UK on European Patents in the same way
as for other non-EU EPC-contracting states, such as Norway and
The commencement of the long-awaited Unitary Patent and Unified
Patent Court systems is likely to be delayed. After the UK has left
the EU, those systems will very likely not extend to the UK and the
UK's national court system will have sole jurisdiction over UK
patent disputes. Despite that, UK-based European Patent attorneys
will have the right to represent clients in the Unified Patent
Court, if and when that system comes into force.
Supplementary Protection Certificates
Supplementary Protection Certificates (SPCs) are important
rights in the pharmaceutical and plant protection industries. SPCs
are national rights that exist separately for each EU state. It is
expected that the UK SPC regime will continue with little or no
change of substance, though the link with the CJEU (the highest
appeal court for EU SPC matters) will change.
Trade Marks and Designs
The EUIPO (formerly known as OHIM) is an EU institution and so
the eventual departure of the UK from the EU will have more impact
on the EU Trade Mark (formerly known at the Community Trade Mark)
system and the Community Design system which are administered by
EUIPO. The implications for trade mark and design owners will
become clearer as the exit negotiations proceed over the next few
years. It is of course expected that the UK will enact transitional
provisions to provide continued protection in the UK for any EUTMs
(formerly CTMs) or Community designs that are in existence as of
the date of actual exit. Those transitional provisions might mean
that existing EUTMs and Community designs automatically gave rise
to corresponding new national rights in the UK or it may be that
owners of existing EU rights will need to re-register their rights
in the UK by way of applications submitted to the UKIPO. From the
date of actual departure from the EU it will be necessary to seek
protection in the UK for trade marks and designs separately from
the EU. Whatever happens in the future, Abel & Imray will of
course be on hand to advise on how best to protect marks and
designs throughout Europe. The UK's vote to leave the EU has come as a surprise to
many, and the after-effects will no doubt continue to be felt in
the UK and in the rest of Europe for years to come. Over the next
few years there will be much activity in arranging an orderly exit
and we in Abel & Imray look forward to keeping you informed of
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 focus on the product being obvious or anticipated as at a certain date provides powerful protection and commercial certainty without conflicting with a patentee's ability to obtain patent protection.
The High Court considered a claim by Azumi, the owner of high-end Japanese restaurant Zuma against Zuma's Choice Pet Products Limited (ZCPP) and its director Zoe Vanderbilt for trade mark infringement.
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