After the recent referendum in the UK that took place on 23 June 2016, many questions have arisen regarding the destiny of European IP rights, such as EU-Trademarks and Community Designs.
At the current state, it is yet impossible to give a precise answer. It is unclear what exactly will happen. After the referendum, the British government should initiate the exit procedure by triggering Article 50 of the Lisbon Treaty. This article rules the procedure on how a EU member state can leave the European Union. Once the British government has done that, the UK will enter into negotiations with the European Union, during which they should come to an agreement about the legal consequences of the UK exit. Amongst those legal consequences are the destinies of the European IP rights.
There are different possibilities, how an exit agreement could handle IP rights. For EU-Trademarks and Community Designs, which currently cover the territory of the UK as EU member, one of the following hypothetical scenarios is most likely:
1. Territorial restriction
That means, from the moment on that the UK exits the European Union, all the EU-Trademarks and Community Designs will not be valid in the UK anymore. All new registrations will not include the UK anymore.
In that case trademark or design owners would have to register for a national trademark or design in the UK, in order to obtain protection in the UK territory. This would probably imply to loose the earlier date of the registration in the European Union, so that the protection in the UK would only start with the new registration there
2. Interim solutions
That means, EU-trademarks or Community Designs that are already registered will still be valid in the UK, either by force of their EU-registration or alternatively by means of a transformation into a national UK trademark or design with the validity of the date of the original registration in the European Union.
For all EU-Trademark that will be registered after the UK exit, the UK territory would not be included anymore. Renewals of EU-Trademarks or Community Designs would probably not include the UK anymore.
3. Special Status for the UK
That means, the UK remains part of the EU-Trademark agreement and the exit of the UK from the EU changes nothing for European IP rights such as EU-Trademarks or Community Designs.
Of course it is possible, that an exit agreement might come up with a different solution and it could also well be, that EU-Trademarks and Community Designs will be treated differently. Due to their different protection period and the fact that the possibility to renew a design is limited, whereas the possibility to renew a trademark is not, the evaluation of what the best solution is might not be the same.
We will monitor the process of the UK exit from the EU closely and we will keep you informed about any new developments or tendencies. As soon as it is foreseeable, which way a solution in the exit agreement between the UK and the EU will take, we will be able to develop a strategy for you, to safeguard your IP rights in the best possible way.
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.
