BREXIT and European Patents

In a referendum on 23 June 2016, the electorate in the United Kingdom voted to leave the European Union. The British Government stresses that it does not question the result of the referendum as well as the intention to actually leave the EU. However, it remains unclear when the actual "Brexit" will happen and under what conditions. It will probably take two or more years to complete the process. What are the impacts on patent rights?

First of all, there will be no impacts on the European patent system as it exists at this time. The European Patent Office (EPO) with its seat in Munich has issued European patents based on the European Patent Convention (EPC) for nearly 40 years. The EPC is no EU institution and some of the EPC-Members are not Member States of the EU. Therefore, a "Brexit" does not affect the possibility of acquiring European patents with effect for the United Kingdom.

However, "Brexit" probably will have considerable impact on a new patent system for the European Union which is supposed to start in the near futures:

A particularity of an EPC-patent is that it once granted exists as a bundle of national rights that must be validated, renewed and enforced in each EPC Member State selected leading to very high costs in case the patent protection is sought for more than just some of these countries. To facilitate and to cheapen the acquisition, renewal and enforcement of patent rights in the EU, the EU Member States have for decades struggled to implement a so-called EU-Patent or Unified Patent and a Unified Patent Court (UPC) being in charge for patent infringement and patent nullity actions. The EU patent and UPC-rulings are to have effect throughout the whole EU. Both should finally start in 2017, unfortunately without the participation of Spain and Croatia. However, one mandatory requirement for the start is ratification by the three major patent nations of the EU: Germany, France, and the United Kingdom. Up to now, only France has ratified and the German ratification is on the way. If the United Kingdom decides not to ratify following the "Brexit" referendum, the EU patent and the Unified Patent Court will probably be put on hold for several years.

Brexit and the consequences for EU trademarks and registered designs

What does the Brexit Referendum mean for Eurpean Union Trade Marks and Community Designs?

The United Kingdom's vote to leave the European Union (EU) does not affect the United Kingdom's EU membership directly. However, the new Government sees it as a mandate to negotiate the Brexit.

As long as the United Kingdom remains a member of the EU, European Union Trade Marks and Community Designs remain valid in the United Kingdom and are enforceable, as well. This may change with the actual Brexit. So far, the United Kingdom has not officially notified the EU of its intention to leave the EU. It is therefore unclear, when it will do so, how long exit negotiations between the United Kingdom and the EU will take and, finally, it is totally unclear how the relations between the United Kingdom and the EU will look like following the actual Brexit.

Since the European Union Treaties leave it to the EU and the exiting member state to determine their relations following the exit, the EU and the United Kingdom could agree that European Union Trade Marks and Community Designs as well as the provisions related thereto remain in force in the United Kingdom following the actual Brexit. However, in that case decisions by EU institutions such as the European Union Intellectual Property Office as well as the European Court of Justice would have to have binding effect in the United Kingdom.

Even if European Union Trade Marks and Community Designs do not remain in force in the United Kingdom following the actual Brexit, it is to be assumed that their proprietors will not lose their rights with regard to the United Kingdom without any chance of a substitute. Rather, it is to be expected that the EU and the United Kingdom will agree on one of the following solutions:

A) European Union Trade Marks and Community Designs are transformed automatically into respective national rights in the United Kingdom.

B) Proprietors of European Union Trade Marks and Community Designs are given a deadline to apply for the transformation into respective national rights in the United Kingdom. It is to be expected that there will be an official fee for such an application. In addition, it is possible that such an application may only be filed by professional representatives in the United Kingdom, which would increase the costs of such an application considerably.

If you plan to file a new European Union Trade Marke Application or a new Community Design Application, it may be wise to file identical national applications in the United Kingdom, as well, in order to make sure that your rights are protected there after the actual Brexit. One argument for additional national applications is the uncertainty regarding the effect of the actual Brexit on existing proceedings for infringement of a European Union Trade Mark or a Community Design. 

In case you plan to acquire protection in the European Union via an International Registration of the Trade Mark or Design, the costs for the additional designation of the United Kingdom are rather low. As a consequence, such an additional designation appears to be advisable in most cases.

Please contact us if you have any questions regarding the protection of your trade marks or designs in the United Kingdom. We will gladly advise you on the best way for you to prepare for the actual Brexit.