The United Kingdom (“UK”) voted in favor of exiting the European Union (“EU”) on June 23, 2016, in a decision commonly referred to as the “Brexit.” If you have European Union Intellectual Property Office (“EUIPO”) registered trademarks or designs, or if you have pending applications before the EUIPO, you may be wondering what impact the Brexit decision will have on your business. Although many issues remain unsettled, EUIPO trademarks and designs should remain fully protectable in all current EU nations as well as the UK.
Here are answers to some of the more obvious questions you might have:
Q: Are there any immediate consequences or actions that must be taken?
A: No. All EUIPO registrations remain enforceable in the UK, and any pending applications will preclude registration of confusingly similar marks or designs in the UK. Moreover, EUIPO applications filed between now and the UK’s formal exit from the EU will be protectable in the UK (unless of course there is an intervening change in the applicable laws).
Q: What happens next?
A: The UK and the EU will enter into formal negotiations concerning the UK’s exit. Once the UK formally notifies the EU of its intent to leave, such negotiations must be completed within two (2) years (unless the EU countries unanimously vote to extend the negotiations). Such negotiations will include discussions on the creation of a system to convert EUIPO applications and registrations into UK applications and registrations.
Q: What happens after completion of the UK exit from the EU?
A: EUIPO registrations will not be enforceable in the UK and separate protection will be required for the EU and UK. Accordingly, to maintain protection for trademarks and designs in the UK, owners will need to convert their EUIPO registrations to UK registrations. The means and timing to convert such registrations are not yet known.
Q: What should EUIPO trademark and design owners do now?
A: We believe there are four things that should be done now:
- For applications filed with the EUIPO within the last six months, consider filing a UK application claiming priority from the EUIPO application. In addition, for an EUIPO application filed in the future, consider filing a separate UK application.
- Have your IP counsel fully apprised on your current EUIPO portfolio so when the time comes, the conversion to the UK system is seamless. This should include an analysis of current use of registered trademarks or designs in the UK. Not all trademarks or designs will require UK protection after Brexit.
- Budget for the upcoming conversion. The UK Intellectual Property Office has announced its intent to reduce filing fees, but converting EUIPO registrations to UK registrations will undoubtedly come at a cost and will require additional UK renewal fees.
- Review current licenses and other agreements governing use of EUIPO trademark and design registrations to determine if modifications to such agreements may be warranted in light of Brexit.