By Sushma Sosha Philip

Britain’s much speculated upon vote to divorce itself from the European Union, took place on 23rd June, 2016 through a referendum. It was rather an unhappy day for Britain’s youth[1], who vented their frustration on various social media platforms, through tweets, memes and even going so far as to draw comparisons with the date being the same as the fateful date on which a certain fictional Dark Wizard rose to power again. These concerns were undoubtedly lost on the people who actually voted for the split, many of who belonged to the generation that sends confused messages to their younger relatives asking what exactly the function of a touch phone is.

In spite of all the pros-and-cons talks that are taking place post-referendum, the implications of the split still remain hazy. One of the presumed effects of the separation of Britain from the European Union is the impact on IP rights. In the post below, I have attempted to summarize the various aspects regarding the position of certain IP right holders and why it is imperative that registered proprietors and applicants whose applications are pending re-evaluate the kind of protection that will be afforded to them in EU and UK.

EPO Patent applications:

Currently, the effect on patents granted by the European Patent Office is quite minimal. This is because the current system of granting patents in UK and EU is governed by the European Patent Convention. All signatories to the Convention may participate[2] in the system irrespective of whether they are part of the EU or not. The same system to file for patents with the EPO or by the PCT route will be followed post-Brexit as well[3] and the rights of holders of patents from the EPO will be more-or-less unaffected[4], as also the rights of those with pending or new patent applications[5]. This does not include Supplementary Protection Certificates[6] which have the effect of extending the life of patents for certain inventions. The granting of these is governed by EU laws and thus, may not be enforceable in the UK.

The Unified Patent Court:

One of the major fall-outs of the Brexit is its impact on the proposed Unified Patent Court (UPC)[7]. The unitary patent system, unlike as in the case of the EPO, only applies to EU members. This system was set to be implemented in 2017[8]. If this system was to come into play, it would allow for a single set of legal proceedings in a Unitary or Unified Patent Court with different branches[9] for the whole of the EU. The fact that this system will apply only to EU members implies that any unitary patents granted once the Brexit is finalized will not apply to UK. Without the UK involved, the Unitary Patent System may also appear less attractive to citizens of other countries who would prefer a one-stop protection process for both the UK and the EU nations[10].

The EPO President has taken quite a reassuring stance on this subject by stating that “the Office expects that the UK and other participating Member States will find a way to allow the full implementation of these so-long awaited achievements.”[11] Thus, if political will exists, it may come about that the UPC could have a seat at London[12].

EU Trademarks and EU Registered Community Designs:

Unlike the minimal effect that Brexit will have on patent rights, its impact on European Union Trademarks is quantifiably higher.  Presently, EU member states are part of the EUTM system. IP owners are provided two-fold protection, both at the national level in the UK (from the UK Intellectual Property Office) as well as rights throughout the EU, from the EU Intellectual Property Office. The consequences of Brexit for EU trademark-holders would be that they would have to register separately for national trademark protections for continued rights in the UK. Also, the fact that the existing registrations have been used only in the UK could be grounds for revocation[13] for non-use in the EU. Pan-European injunctions will no longer be possible, implying that separate proceedings[14] have to be instituted in the EU and UK to obtain injunctions in these territories. It is however, expected that current owners of EUTMs will be provided with some mechanism to preserve their rights in UK[15] such as a payment of a revalidation fee for UK registration, with the effective date of registration being that of the EUTM.

Furthermore, the dissociation of UK from the EU also seems to be a precursor to cross-border complications to trade and commerce. As, UK is no longer a part of the EU, stringent border measures will be adopted[16] thus limiting trademark holders’ rights to trans-border shipping. The same effect as on EUTMs will be seen for EURCDs[17] i.e., EU Registered Community Designs. They will no longer be protected in UK and separate filing for protection will have to be done in UK.

As of now, there is no immediate effect on those trademark applications pending in the EUIPO, and on existing EU trademarks as well. They will be processed to have effect in EU including UK until the UK formally leaves the EU[18]. However, it is prudent for existing owners to be aware of the risks involved and to be prepared for making alternate arrangements to extend protection.

In conclusion, while the Brexit spells major upheaval in many spheres, IP holders still have the luxury of time to take considered decisions regarding their IP rights and how best to proceed when protecting them.

[1] The U.K’s Old Decide for the Young in the Brexit Vote, Simon Shuster/, available at http://time.com/4381878/brexit-generation-gap-older-younger-voters/

[2] How Would a Brexit Affect IP Rights?, Florian Traub and Andrew Clay, available at http://www.squirepattonboggs.com/~/media/files/insights/publications/2016/05/how-would-a-brexit-affect-ip-rights/23338ipthow-would-a-brexit-affect-ip-rights-alertthought-leadership.pdf

[3] BREXIT FAQ, The Chartered Institute of Patent Attorneys, available at http://www.cipa.org.uk/policy-and-news/brexit-updates/brexit-faq/

[4] Impact of UK’s Brexit for Intellectual Property Rights, The National Law Review, June 22 2016, available at http://www.natlawreview.com/article/impact-uk-s-brexit-intellectual-property-rights

[5] Supra n. 3

[6] Supra n. 4

[7] Impact of Brexit for Intellectual Property Rights, Foley & Lardner LLP, June 22 2016, available at http://www.lexology.com/library/detail.aspx?g=ea0f7f76-1a1f-4ce5-8380-41657e0494c0

[8] Brexit: English Intellectual Property law implications, Sally Shorthose, June 24 2016, available at http://www.twobirds.com/en/news/articles/2016/uk/brexit-english-intellectual-property-law-implications

[9] Supra n. 2

[10] Even in case of a Brexit, UK may join Unitary Patent system, Kluwer UPC News blogger, June 20 2016, available at http://kluwerpatentblog.com/2016/06/20/even-in-case-of-a-brexit-uk-may-join-unitary-patent-system/

[11] UK Referendum – Statement of President Battistelli, June 24 2016, available at http://www.epo.org/news-issues/news/2016/20160624.html

[12] Supra n. 3

[13] Supra n. 4

[14] Brexit – What Could Happen to My IP Rights?, Florian Traub, Iliana Haleen and Andrew Clay, available at http://www.squirepattonboggs.com/~/media/files/insights/publications/2016/06/brexit-what-could-happen-to-my-ip-rights/brexitwhatcouldhappentomyiprights.pdf

[15] BREXIT – Impact on UK and EU Trade Marks, GJE Intellectual Property, July 12 2016, available at http://www.gje.com/news-115-brexit—impact-on-uk-and-eu-trade-marks.html

[16] What are the Intellectual Property Ramifications of Brexit?, John L. Hemmer, Anita B. Polott, available at http://www2.law.temple.edu/10q/intellectual-property-ramifications-brexit/

[17] “Brexit” – Implications for IP owners and practitioners, Priya Nagpal, April 12 2016, avaialble at http://www.olswang.com/articles/2016/04/brexit-implications-for-ip-owners-and-practitioners/

[18] Supra n. 7

Image source: Photo by Fred Moon on Unsplash. Available at: https://unsplash.com/photos/swJAv6imPm0