The result of the EU Referendum or 'Brexit' has naturally left Intellectual Property (IP) rights holders concerned and confused over their current and future position.
The current state of play - a brief history
Given that the withdrawal of the UK from the EU will have no effect on its membership of the European Patent Organisation, and as such, will have no real impact on patent protection in Europe and the UK, it is of course brand owners who will be most affected by Brexit. But this is not the first time in recent years that brand owners have experienced change in their European protection.
In the last few years, brand owners have seen a considerable shake-up of the EU Trade Mark Registration system, with a recent European decision removing territorial borders in the consideration of what constitutes 'genuine use' of a European Trade Mark. The effect for brand owners has been that the long held principal of unitary character - that European Trade Mark Registrations are valid throughout the EU provided use has been made in at least one member state of the EU - has essentially been blown out of the water, potentially leaving EU Registrations vulnerable to cancellation actions. Shortly afterwards, brand owners faced the introduction of the new EU Regulations brought into force in March of this year. The effect on brand owners has been that many European Trade Marks became vulnerable to a narrowed scope of protection through amendments to the treatment of class headings within specifications. Now brand owners have Brexit. The effect for brand owners is unknown at this time.
Not the first time
So Brexit is not the first time that European Trade Mark rights have been called into question, and it is unlikely to be the last. IP law is ever-changing and savvy brand owners should be constantly reviewing their IP portfolios to ensure they are adequately protected.
Whilst we do not yet know what transitional provisions will be put into place for European IP rights holders following Brexit, it is difficult to foresee a future in which no transitional provisions at all are adopted. Let's not forget that this is an issue facing all European Trade Mark Rights holders, not just those rights holders based in the UK. A situation where large corporations from the other great commercial powerhouses of the world - the US, Japan, China, to name but a few - potentially losing over 20 years' worth of IP protection at an economically sensitive and commercially unstable time, when the UK needs to strengthen, not weaken, those international ties, is likely to be as unthinkable for the UK government as it is for the IP rights holders themselves.
Therefore, whilst we cannot say for sure, the more likely future and one much easier to imagine, is one in which transitional provisions are put into place allowing the continuation of protection in the UK via some form of conversion of those European rights to national UK rights. Whether this will be a rubber stamping exercise by the UKIPO, or whether this will be via a more formal re-examination process remains to be seen, but a situation whereby those rights simply disappear altogether would seem unlikely.
Action to take now (and what not to do)
European IP rights holders should not therefore spend time contemplating whether or not current rights will exist in the post-Brexit era, but should spend time now ensuring that their IP portfolios will thrive when that era finally arrives. Now is the perfect time to conduct a health check of your IP portfolio, not just in the light of the impending changes following Brexit, but also in the light of changes that have already taken place.
We're helping our clients to take the following steps to strengthen their brands and portfolios:
- Review your use - are you using your EU Trade Marks throughout Europe, or only in certain territories? With or without Brexit, failure to use your mark in a substantial part of the EU could render your registrations vulnerable
- Review your specifications - there is still time before the September deadline to amend specifications containing class headings to ensure that valuable scope of protection is not lost
- Review any co-existence agreements - those that define the territory as the EU may need further definition or clarification to ensure continuance in the UK following Brexit
- Re-consider seniority claims - it is perhaps better to maintain any national UK rights that you enjoy rather than allowing them to lapse in lieu of seniority claims against under EU Trade Mark Registrations. Seniority claims are relatively untested, and at a time of uncertainty, maintenance of existing UK national rights would seem preferable
- International Applications - if considering filing an International Application, it would seem preferable at this stage to base that application on a national UK application or registration rather than a European mark - long examination procedures in certain Madrid Protocol territories could result in uncertainty for Internationals based on European rights that remain pending at the time of Brexit
- New Applications - consider whether you really need an EU Trade Mark Registration, or whether a UK registration is in actual fact sufficient. Whereas an EU Registration was once seen as a way of obtaining bonus protection throughout the EU including the UK for minimal extra cost, it would now seem unnecessary, and potentially dangerous, if in actual fact your business is based solely in the UK
- Consider customs applications - used to prevent infringing/counterfeit goods from passing through the relevant national customs. Tighter border controls are likely to become a reality in the future, and IP rights holders need customs officials on their side