By a slim margin, the United Kingdom voted to leave the European Union (EU) last week. Via the European Union Trademark System and the European Patent Convention a trademark or patent owner had the ability to secure protection across all EU member states by a single, unified registration. Of course, EU protection extended only to EU member states. So, with the UK on the way out of the EU, questions arise as to what protection will the owner of an EU right have in the UK once the BREXIT is complete? For companies that do business in Europe, this could have an impact on European Intellectual Property rights. Smart companies should start considering European options now.

Short Term

It will take at least two years for the UK to officially and fully withdraw from the EU. Until that time, all EU treaties and laws will continue to apply. So, for the near term, there does not appear to be any significant impact.

Long Term

As noted, the UK will continue to abide by EU treaties and laws for at least the next two years. During that time, there will likely be additional withdrawal agreements negotiated between the US and EU member states. Over the course of development of these agreements it will become clearer how intellectual property rights will be affected.

Patents

With regard to patents, nothing will change. BREXIT has no impact on the UK’s membership in the European Patent Convention (EPC). Additionally, the European Patent Office (EPO) is not an EU institution and will still be able to grant European patents that can be validated in the UK. Additionally, BREXIT does not impact UK patents or UK’s status as a signatory to the Patent Cooperation Treaty (PCT). UK national phase designations under the PCT will still be able to be filed with the UK Intellectual Property Office. Therefore, BREXIT does not seem to have any significant impact on patent rights in the UK or EU generally.

Trademarks

As far as trademarks are concerned, until BREXIT is complete, all current European rights will have the same effect in the UK. This means that there is no change to coverage of European Union Trademarks and no need to immediately seek national registration in the UK. Once BREXIT is complete, however, existing EU trademarks will technically not provide coverage in the UK. So, like Switzerland and other non-member states, specific national protection in the UK will be required.

As UK and the EU develop the final exit strategy, additional information will come to light, specifically whether there will be any mechanism to convert EU trademark rights into UK national rights. Similarly, further guidance may come out of the UK regarding what UK use will be required to make such a conversion or, more precisely, what time period will apply to render a mark vulnerable to cancellation for non-use in the UK. This may impact EU trademark owners who relied on use elsewhere in the EU to support the EU trademark, but additional UK rules will likely be forthcoming.

Take-Aways

For the near term, there does not appear to be any impact on any rights. It will take at least two years for the UK to fully withdraw from the EU and until then, things will remain status quo. Looking further into the future, patent rights will be largely unaffected because the main European patent treaties are unrelated to EU membership. Thus, they will remain in force and those mechanisms will continue to address European patent rights generally.

On the trademark side, once BREXIT is complete, existing EUTMs will not extend coverage to the UK. However, it is very likely that in the coming months further guidance will come from UK and the EU regarding how existing EU trademarks can be converted into UK national registrations.

If you have any specific concerns about how BREXIT may impact your European business, please contact me at mark.nieds@henlaw.com or by phone at 239-344-1153.

Photo Courtesy of Petr Kratochvil