Brexit Update

The UK and the EU recently concluded the first round of talks or so-called “divorce bill”, allowing discussions to move onto substantive matters.  Accordingly, the time is right for an update on what has been established in relation to IP rights.

First, in relation to European patents, it is still the case that nothing has changed – the European Patent Office which grants “European” patents is not an EU institution and the UK will remain a member state, so European patent applications will still cover the UK.  When a European patent is granted it is necessary to validate in each country where you want the patent to have effect, so, if validated in the UK, the European patent will have effect in the UK.

There is much speculation as to whether the Unitary Patent (which would be a single patent covering certain EU states) will come into effect and whether, if so, it will cover the UK.  This is still unclear, although the UK Government has indicated that it will ratify the agreement to be part of the Unitary Patent.

Unlike European patents, European trade marks and designs are unitary EU rights and the European Commission recently issued a notice to alert holders of EU trade marks and designs to the fact that, in the absence of any agreement between the UK and the EU, these EU rights will cease to apply to the UK from 30 March 2019.

In addition, the notice drew EU trade mark and design holders’ attention to the fact that those domiciled in the UK only would, like other companies outside the EU, need to appoint a European professional representative to represent them before the EUIPO in relation to EU trade marks and designs.  Wilson Gunn recently established a presence in Dublin in the Republic of Ireland (which will remain in the EU) and so we will continue to be able to represent UK (and all other) companies before the EUIPO, even in the event of a “no-deal” Brexit.

As for the matter of EU rights ceasing to have effect in the UK, we are very optimistic that a deal will be reached that ensures that EU trade mark and design rights applied for when the UK was part of the EU will, one way or another, continue to have effect after the UK leaves the EU. 

There are several reasons for this optimism, but essentially, it is because it is what all the major interested parties want.  On the one hand, the EU Commission has issued a position paper which as its headline point indicates that holder of any intellectual property right having unitary character within the Union that was granted before the withdrawal date should, after that date, be recognised as the holder of an enforceable intellectual property right in relation to the United Kingdom, comparable to the right provided by EU law. 

On the other hand, UK business would suffer most if their EU rights no longer covered the UK, thus, the UK government’s position is expected to reflect that of the EU. 

Whilst there is no official comment from the UK government at this stage, the UK’s Chartered Institute of Patent Attorneys and Chartered Institute of Trade Mark Attorneys are both in favour of the same outcome and are lobbying the UK government to that effect.  Moreover, groups such as Marques, (a representative body for over 750 companies or firms concerned with the interests of trade mark owners in Europe) have also issued position papers calling for the maintenance of enforceable rights in the UK with minimal disruption to IP holders.  To our knowledge nobody is lobbying for an outcome where EU rights stop having effect in the UK and no equivalent rights are provided.

In consequence, although the precise details of the eventual outcome of Brexit remain uncertain, on the basis of current evidence, European filing strategy should not be affected by Brexit.  So, where protection is required in multiple European states, filing EU trade marks and designs, or European Patent Applications is likely to be most suitable and Wilson Gunn will be able to continue to represent you in relation to all of these rights. Of course, advice appropriate to your specific circumstances should always be sought and we are always happy to provide this.

If you have any questions arising from this article or from the Brexit situation more generally please contact us.

© 2018 Wilson Gunn