This article was written on 20 August 2019. The content was relevant at the time of writing, but may have since changed. For our latest Brexit updates, please access our Brexit Hub.
The UK is set to leave the European Union on 31 October 2019 (“Exit Day”). Although this will not impact the patent system in Europe, which is separate from the EU and so not affected by Brexit, there will be fundamental changes to how EU-wide rights, including EU Trade Marks and Registered Community Designs, are protected in the near future.
From London, Munich, Amsterdam and San Francisco, Kilburn & Strode’s European IP attorneys are qualified for EU and UK matters, and can guide you smoothly through the transition.
Do you need a corresponding UK application?
When the UK leaves the EU, holders of existing registered EUTM rights will have their rights automatically cloned by the UKIPO to create a new UK registered right. This requires no input from the holder for registrations, retaining filing, priority and seniority dates. Pending EUTM applications will be able to obtain the cloned right, but must apply to the UKIPO to do so. Given the 3-month opposition window at the EUIPO, it is now mathematically impossible for a yet-to-be filed EUTM to be registered before Exit Day.
For existing rights, rights holder should review whether they have adequate protection in place, as well as whether exploiting the systems with effective renewal strategies can save on short term costs.
Exhaustion of rights (“first sale doctrine” in Europe) and free movement of goods
When the UK leaves the EU, it will also lose access to the EEA (European Economic Area) free market, and the EEA exhaustion regime. As it stands, there will be asymmetric exhaustion of rights depending on whether the first sale is into the EEA or the UK. The UK government will recognize exhaustion of rights for goods sold into the EEA, but goods sold in the UK first and then sold in the EEA may face objections from rights holders. The position regarding exhaustion of rights is very much in flux, and may be industry specific. Customs procedures will reflect any changes, and a review of existing UK/EU Customs recordal applications should be undertaken.
Ongoing disputes, assignments, licenses, and security interests
Ongoing disputes in both the UK IPO and UK Courts which began before Brexit will continue to their conclusion. An EU right subject to any agreements, assignments, licenses and security interests effective prior to Exit Day will carry over to any respective cloned UK right, but careful review is required to ensure continuity. If you have concerns regarding an ongoing or future dispute, contact a Kilburn & Strode advisor.
Other rights – Supplementary Protection Certificates, unregistered community design rights, EU geographic indications, and collective and certification marks
The UK government has issued various provisions to ensure a smooth transition for IP rights as the UK leaves the EU, with or without a deal. However, each are at different stages, some with legislation, some without. This includes provisions for Supplementary Protection Certificates (SPCs) for patents, unregistered community designs, protective geographic indications of origin for products, and the cloning of EU-wide collective or certification marks. Herein lies some ambiguity, where the lack of legislation means the situation is not clear, or where a UK rights may have a different term of effect to a new, UK right cloned from an EU right.
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