With Sajid Javid, the UK's Chancellor of the Exchequer, maintaining that the UK is leaving the European Union in "...a matter of days...deal or no-deal" IP owners need to consider the practical effects of such an outcome.
For patents, there is no practical effect as European patents are obtained through the European Patent Office (an intergovernmental organisation) and not through the EU. Business as usual.
For trademarks and designs, the general message is "Keep calm and carry on" The UK government has passed legislation concerning post-Brexit IP arrangements (which could become operative in both a deal or no deal situation), which means that:
- for pending EU applications, applicants will have nine months post-Brexit day to file a new UK application claiming the filing (or priority) date of their EU application;
- existing registered EU rights will be "mirrored" on Brexit day, with a new right being erected in the UK without the owner having to take any positive steps; however, designs where publication has been deferred will be treated as a pending application and the owner will have nine months post-Brexit day to file a new UK application claiming the filing (or priority) date of their EU design;
- separate renewal action will be required for the EU right and the mirrored UK rights;
- separate EU and UK protection will be required after Brexit, as the UK will by then be a "third country"
Although the above arrangements provide a reasonable safety net, for those in markets where infringement or counterfeiting is common it makes sense, at this stage, to protect new brands by simultaneously filing EU and UK trade mark applications.
For applicants filing parallel UK and EU applications (trademarks or designs) we provide a 50% reduction in our charges for the UK application when instructed to file at the same time as the EU application.
We offer this option because:
- we appreciate that some IP owners want quick and clean enforcement rights (and you are likely to get an enforceable right in the UK sooner);
- we appreciate that some IP owners need an enforceable UK right if they want to prevent counterfeit goods being imported into or exported out of the UK;
- we appreciate that some IP owners need a strong base for a WIPO International Registration in the short-medium term that an EUTM simply can't provide (i.e. if the owner is domiciled outside the EU and doesn't have a "real and effective" commercial presence there – see points 3 and 10 of the World Intellectual Property Organisation's guidance on no-deal Brexit); and
- the prospect of getting a "free" UK registration if you haven't already filed for an EUTM look increasingly remote.
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.