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Brexit and Intellectual Property

The decision of the United Kingdom (UK) to leave the European Union (EU) has left many Intellectual Property (IP) owners to wonder what will happen with their UK trade mark, patent and design rights.

Trade Marks

Many Australian businesses and individuals with commercial interests in the UK have chosen to register EUTMs (known in the past as Community Trade Marks or CTMs) instead of filing directly into the UK as the EUTM provides a Europe-wide cost effective strategy that Australian filers found difficult to refuse.  

With the UK’s exit from the EU we must ask ourselves: What happens to those trade mark rights in Europe?  Will my EUTM still be protected in the UK after ‘Brexit’?

The answer is not that simple. Whether EU trade mark rights continue to apply in the UK will depend on the outcome of the UK’s negotiations with the EU and the legislative aftermath of ‘Brexit’.  This could take a while.

In the meantime, the UK is still a member of the EU and so any existing EUTM rights will continue to apply.

So during this waiting period...what should Australian EUTM holders do? We recommend that businesses and individuals with a particular interest in the UK revise their trade mark portfolios carefully; it may well be that filing a supplemental UK trade mark would be the best strategy for you and your business to make sure that your rights are protected in the UK notwithstanding the outcomes of ‘Brexit’.

So what might businesses need to do? Businesses may wish to review their trade mark portfolios carefully and consider whether they ought to file for supplemental UK protection soon as a back-up to ensure no holes develop in their portfolio.

Patents

Australian patent applicants may apply for a UK patent in one of two ways, either:
(i) directly with the UK Patent Office via the Paris Convention route; or
(ii) indirectly with the European Patent Office (EPO) via the European regional phase of the PCT route by virtue of the UK’s membership of the European Patent Convention (EPC). 

Membership of the EU is not a requirement of the EPC system.  As such, Brexit will not have any foreseeable impact on an Australian applicant’s current ability to apply for a UK patent via the EPC system unless of course, the UK withdraws its membership from the EPC (in the overall scheme of things, most likely a very low priority on the Brexit list of things to do!).  On the other hand, the impact of Brexit on the proposed introduction of the EU Unitary Patent system remains to be seen.     

Designs

Similar to trade marks, the ability of an Australian business or individual to apply for an EU Community Designs Registration that covers the UK depends upon the UK’s membership of the EU.

Summary

Although the UK has voted the leave the EU, negotiating and formalising its exit will be a long process (at least 2 years after the UK gives notice of its intention to leave).

We will continue monitoring and informing our clients of any developments and their impact on IP rights as they occur.

In the meantime, what does Brexit mean for Eurovision….?

Fabiola Dos Santos, Kristy McCamley and Saioa Echevarria Idianez

5 July 2016