Following the Prime Minister’s triggering of Article 50 today, 29 March 2017, we have 2 years until the legislative reality of Brexit and its implications will truly impact IP owners. However, there are steps that brand owners should be taking now to position themselves for when Britain leaves the EU.
Here are our 5 actions organisations can take now to address Brexit-related brand issues in advance – there will be plenty else to think about in 2019 and the IP registries are likely to become overwhelmed with demand closer to the exit date.
- If you only have EUTM protection in the UK and not a UK trade mark, register your trade mark in the UK. It is unknown whether EUTMs will continue to cover the UK (but it looks likely that they will not) or whether the UK portion of EUTMs will be converted into UK trade marks: our advice is to register your key brands now to avoid the rush.
- The same might be said for Community registered designs which have not already been registered in the UK. However, if the product has been on the market for over 12 months, it will not be registrable in the UK as a registered design due to lack of novelty. If your design is within that 12 month window, seek registered protection in the UK now.
- Re-visit any valuations given to EU-wide IP rights and how these would be impacted if such rights do not cover the UK.
- Scour key IP contracts for Brexit-related provisions – some IP licences include termination provisions for EU exit events, others refer to the European Union as a territory – thought must be given to whether Britain will automatically fall out of the scope of such licences and may need to be discussed with counterparties to clarify the position.
- Pause and consider carefully before changing the governing law of your licences away from English law: London is still likely to be the commercial center of Europe despite Brexit and post-Brexit laws are likely to bear great similarity to EU law for some time post-Brexit.