On June 23, 2016, a majority of Britons voted in favour of leaving the EU. This means that within two years the UK will have to dissociate itself completely from the EU. This has never happened before and therefore no clear procedures are in place.
Due to the extensive harmonization of Trademark rights in the EU, the Brexit will have significant consequences for your EU trademark registrations that previously applied to the UK. For your present UK validated European (EP) patent and for obtaining UK patents via pending and future European patent applications, the Brexit has less significant consequences.
Below we will outline the consequences of the Brexit for both Trademarks and Patents.
The Brexit will have a major impact on the EU trademark system, as all member states are automatically designated in an EU trademark application. In fact, the EU is seen as one big area that cannot be split up. Furthermore, protection of the EU registration is automatically extended to new EU member states, the latest example being Croatia. Correspondingly the logical consequence would be that protection automatically ceases when a member state leaves. Now that the UK will leave the EU, it is clear that EU trademark registrations will no longer be valid in the UK in the future.
Because this has never happened before and there is no legislation governing an exit, it is not yet clear what the consequences will be. It is likely that a transition period will be instituted and that it will be made possible to partially convert current EU trademark registrations to UK registrations while maintaining the original date of protection. Our office will of course closely monitor any development and keep you updated.
The Brexit will also have an effect on representation. Although it is to be expected that UK attorneys may still represent clients before the EU Trademark Office, the UK Courts will no longer have jurisdiction beyond UK borders. Therefore, at this time already it might be wise to have an attorney of record for EUTM’s outside the UK.
While the EU trademark system is linked to EU membership, the current European patent system is not. EU membership and European Patent Convention (EPC) membership overlap, but several EPC member states, such as Switzerland, Norway and Turkey, are not EU members. The UK will remain EPC member state and will merely join the current non-EU members of the EPC. In view thereof, the Brexit has no immediate consequence for your present UK-validated European (EP) patent. The same applies for obtaining a UK patent via a European patent application: after grant of a European patent, validation in the UK will still be possible. Furthermore, it will remain possible to enforce UK-validated EP patents in UK courts. However, as with trademarks, UK courts no longer have jurisdiction outside of the UK. UK courts will no longer be able to issue EU-wide injunctions. This may influence the choice for a venue for patent litigation.
The Brexit does have immediate consequences for the Unitary Patent package, for which preparations are well underway. Since non-EU members cannot participate in the Unitary Patent package, the future Unitary Patent will not cover the UK and the future Unified Patent Court will have no jurisdiction in the UK. Furthermore, for the establishment of the Unitary Patent package, ratification from a total of 13 EU member states is needed, among them France, Germany, and the UK – being the three states with the most patents in force. Although theoretically the UK can still ratify until its formal exit, it is likely that the UK will not. This will cause at least a further delay for the already delayed Unitary Patent package. However, once the rules regarding ratification have been amended such that UK ratification is no longer required, the ratification process can continue and the Unitary Patent package can still be established.
Undoubtedly there will be political discussion in and amongst the EU member states that still participate in the Unitary Patent package, whether or not the establishment of the Unitary Patent package is still justified now that one of its three main pillars is taken away. Although it is not likely that the Brexit will stop the establishment of the Unitary Patent package, one never knows where such political discussions may lead.