What will happen to trademarks, design rights and patents with Brexit?

June 10, 2019

With these tips, you will stay abreast of IP matters with regard to Brexit whether we are talking about a patent, a trademark or design protection.

The British voted to leave the EU in June 2016. The vote was the starting point for a confusing period during which the only certain thing has been uncertainty. The British Government and Parliament have failed to agree on how to execute Brexit.

“It has been interesting to follow the Parliament’s vote. It seems that you can say no to everything. That deal does not work for us; we cannot leave without a deal; no, we do not want another referendum; no, we do not want this, or this”, says Kolster’s European Patent Attorney Marjut Honkasalo.

Other EU member states have followed the UK’s denial after denial with fatigue and reserve.

According to present information, the last day of October is the deadline for the UK  to accept the withdrawal agreement from the EU. The deadlines and dates may still change, but it is important to already consider the possible impact of Brexit on IP (Intellectual Property) rights.

Trademarks, design rights and Brexit – how to be prepared

With the notes of Kolster’s IP Lawyer, you can get a grip on the confusing Brexit mess. Brexit will have the most direct impact on the application and validity of EU trademarks and Community designs.

Registered EU trademarks and designs

1. It is very likely that rights already granted will not be lost. Therefore, when implemented, Brexit will not require rightholders to take action on already registered trademarks and designs. In this case, no costs will incur to rights holders either.
2. UK’s national IP office, the UK Intellectual Property Office (UKIPO), will convert existing EU registrations into national UK registrations. The priority or application dates of registrations will remain unchanged. This is particularly important in the event of a dispute over who has a prior right to a trademark, for example.
3. It is also likely that trademark registration numbers will remain unchanged. However, a new prefix may be added to the number.

Pending EU trademark applications

1. EU trademark and Community design applications that are pending on the possible exit date will no longer be valid in the UK. The applicant will have nine months to prepare an application equivalent to an EU registration for UKIPO. This way, the priority of the EU application date will also extend to the British application.
2. The applicant will have to pay a separate application fee to UKIPO. UKIPO will review the application in accordance with national procedures and legislation.
3. The application and priority dates of the original EU trademark or Community design application will remain valid even after Brexit.

New EU trademark applications

1. Especially with urgent applications, filing a separate national application now in the UK is worth considering. It is also possible to extend international trademark registration by designating the UK already at this stage.
2. In certain cases, it is advisable to reach a resolution of pending opposition and cancellation processes before Brexit.

Patents & Brexit – what will change, what will not?

Brexit will not affect patents with the exception of the unitary patent, Kolster’s European Patent Attorney Marjut Honkasalo summarises. Patents and Brexit are described in a nutshell below.

• The European Patent Office (EPO) is not an organisation under the EU, so there will be no changes to the current practices due to Brexit. The patent application process and opposition proceedings will remain unchanged.
  
  
• An unitary patent and an unified patent court have been planned and prepared for the EU area, to only come into force in participating EU member states that have accepted the unified patent court to be the court for patents granted by the EPO. It is likely that Great Britain cannot be part of it after Brexit. For companies, this means that once the unitary patent is an option for at least part of the EU area, protection in Great Britain will require the conventional country-specific European patent validation. The schedule of the entry into force of the unitary patent is uncertain.

Brexit will also affect the exhaustion of rights

The UK’s withdrawal from the EU will also affect the exhaustion, that is, expiry, of trademarks and other IP rights.

“When products bearing a registered trademark or that are otherwise protected by IP rights are sold anywhere in the European Economic Area with the consent of the rights holder, the rights holder cannot prevent the resale of these products in the same area”, Kolster's IP Lawyer sums up.

This is especially true for parallel imports: in this case, genuine products are imported into the country without the rightholder’s permission within the European Economic Area.

“A non-deal Brexit can mean that the exhaustion of rights does not apply to all products imported from the UK into the European Economic Area. When products flow in the other direction, i.e. from the European Economic Area to Britain, it seems that the exhaustion of rights is maintained, so the situation remains the same”, Kolster's IP Lawyer says.

Therefore, companies should note that there may be changes to the tangible import of goods if a non-deal Brexit enters into force.