Yesterday, Britain voted to leave the European Union. The exit will not happen immediately. It is likely to take at least two years after the process is actually triggered for the transition to be completed. For the time being it is business as usual. There is no immediate loss of Intellectual Property (IP) protection in the UK; EU-wide rights such as European Union Trade Marks and Community Designs remain unaffected until the UK formally leaves the EU. Furthermore, transitional provisions will be put in place to handle the carve-out of UK rights and their future maintenance.
Importantly, however, there are numerous IP considerations that ought to be borne in mind now that the UK has decided to leave the EU. We briefly set forth some of the key considerations below.
Trademarks – EUTM
After Brexit is completed, EU Trade Marks (formerly known as “Community Trade Marks” (“CTMs”)) will no longer cover the UK.
Proprietors of existing EU Trade Marks will be able to rely on transitional provisions (terms and procedures for which are yet to be determined), which will enable proprietors to obtain separate UK coverage based on existing EU Trade Marks rights. As an initial matter, however, we encourage trademark owners to consider the following recommendations/issues:
- Going forward, if the UK is an important marketplace, applicants should consider seeking separate UK trade mark protection in addition to filing applications for the EUTM (or designating the EU within a Madrid Protocol application). This step would bring certainty and the assurance that rights are readily enforceable in the UK should the need arise.
- Please note that any Madrid Applications based on EU Trade Marks right requires the applicant to have a real and effective commercial establishment in the EU.
Design Rights – Community registered design right
After Brexit, Community registered design rights will no longer cover the UK. As an initial matter, we encourage European Design Right owners to consider the following recommendations/issues:
- Similar to trademarks, if the UK is an important market, applicants should consider seeking separate UK registered design protection in addition to filing a Community registered design right. This step would bring certainty and the assurance that rights are readily enforceable in the UK.
- If a Community design right application has been made within the last six months, it is possible to apply for a parallel UK registered design right, claiming priority from the earlier Community design right application (provided that this was the first filing of the design right in question).
- Alternatively, proprietors may continue to apply for Community registered design rights and rely on transitional provisions (terms or procedures for which are yet to be determined) which will likely enable proprietors to obtain separate UK coverage based on the Community registered design right. Existing Community registered design right holders will be able to gain separate UK coverage by this route. Unlike for trademarks, there is no mechanism to convert a Community registered design right into a bundle of national registered design rights.
- Note that any WIPO Applications based on a Community Design Right requires an applicant to have a real and effective commercial establishment in the EU.
We will continue to post updates on the Brand Protection Blog and separately will be keeping our clients advised through webinars and client alerts as we learn more details. More information, analysis and guidance about Brexit can be found on Norton Rose Fulbright’s dedicated Brexit site and we have a team who will be monitoring developments closely. Please let us know if you have any questions or would like to consult with one of our team members further.