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IP Information & News

24 June 2016

BREXIT - What Will this mean for Trade Marks & Registered Designs?

Brexit - 700 x 310
Updated 29 March 2017
On 23 June 2016, the British public voted in a referendum to leave the European Union (so-called “Brexit”). On 29 March 2017 the United Kingdom triggered Article 50 of the Treaty on the European Union to commence the two year process of the United Kingdom's withdrawal from the Union. However, trade mark and design owners need not be concerned. There will be no immediate loss of IP protection for owners of EU trade marks and designs.

It is worth emphasising that the United Kingdom has not yet left the European Union. Owners of EUTMs and RCDs need not panic as their rights remain valid and enforceable in the United Kingdom.

Whilst there may be uncertainty in the next two years, we now look at what Brexit could mean for the trade mark and design systems in the UK and Europe.

Current Options

Currently, UK individuals and businesses have the choice of registering their trade marks or designs at the United Kingdom Intellectual Patent Office (“UKIPO”) and obtaining national rights or as a European Union Trade Marks (“EUTMs”) or Registered Community Designs (“RCDs”). These unitary rights, afford trade mark or design protection in all current member states of the European Union (including the UK). This remains the case today, even following Brexit.

Impact of Brexit

In the longer term and once the UK Government has negotiated its exit from the European Union, EUTMs and RCDs will no longer extend to the United Kingdom. UK businesses exporting to and selling goods and services in mainland Europe would have to consider filing national applications in their home market and EUTMs / RCDs to cover the European Union. Similarly, businesses wanting to obtain trade mark and design protection in the UK would need to add the cost of obtaining national trade mark protection as part of their filing strategy.

Brexit would also have other consequences for EUTMs and RCDs:

• EUTMs that are only used in the UK would presumably become vulnerable to cancellation on the grounds of non-use. EUTMs can be revoked where there is no genuine use of the mark in the EU. Use in the UK would not longer count towards maintaining EUTM registrations.

• Pan-European injunctions obtained in infringement actions involving EUTMs and RCDs would no longer extend to the United Kingdom. Consequently, a right holder would be required to bring two sets of proceedings where an infringement is occurring in one or more EU Member State and the UK. This would result in increased litigation costs.

• Existing pan-European injunctions may no longer extend to the UK. This could result in claimants having to seek a fresh injunction in relation to an infringement occurring in the UK or seek to extend the existing pan-European injunction. Again, this would lead to greater costs.

• Companies who rely on unregistered Community design rights to protect their product developments and designs would lose these strong rights so it would be more difficult to defend against copying.

Existing Rights

With regards to existing EUTMs and RCDs, it is currently unclear how these rights could be extended to the United Kingdom. We do not expect a situation where rights would simply be lost. A variety of transitional provisions are under discussion which would be implemented, thus allowing owners of EUTMs and RCDs to extend their rights to the UK whilst retaining priority.

We will be assessing the situation regularly and providing updates as they become available.

If you have any questions about this article, please get in touch with us through our contacts.