For some British IP professionals all is about to change with regards to European intellectual property practice – but for others nothing will change at all.
At a meeting between the EPO and the Chartered Institute of Patent Attorneys (CIPA) in late January, it was confirmed that European patent attorneys who are based in the UK will be able to continue to represent applicants before the EPO. This means that ‘Brexit’ will not have any impact whatsoever on the membership of the UK in the European Patent Organisation, thus maintaining the number of member states at 38.
On the other hand, in the absence of any other agreements, the European Union Intellectual Property Office recently issued a notice to stakeholders with regards to the regulations concerning the European Union Trademarks and the Community Designs, in which the UK will be considered a ’third country‘ from midnight on 30 March, 2019. This is due to all Union primary and secondary law ceasing to apply to the United Kingdom from this withdrawal date. By a third country they are referring to a country which is not a member of the EU.
In this notice the EUIPO declares that ’Preparing for the withdrawal is not just a matter for EU and national authorities but also for private parties.’
From the withdrawal date all EU trademarks and registered Community designs as well as unregistered Community designs made available to the public before the withdrawal date will continue to be valid in the remaining 27 EU member states, but will no longer have effect in the United Kingdom.
All existing seniority claims in EU trademarks. based on national trademark rights in the United Kingdom. will also cease to have an effect in the EU as from the withdrawal date.
It must also be noted that the holders of international registrations of trademarks and designs having designated the European Union before the withdrawal date pursuant to the Madrid system and the Hague system, should also consider that, those international registrations will also no longer have effect in the United Kingdom.
The EUIPO also makes a point regarding the fact that natural or legal persons that are domiciled or have a seat in the United Kingdom only will have to be represented before the European Union Intellectual Property Office in accordance with Article 120(1) of Regulation (EU) 2017/1001 (on the European Union trademark) and Article 78(1) of the Regulation (EC) No 6/2002 (on Community designs) in all proceedings provided for in those two Regulations, other than the filing of an application for an EU trademark or an application for a registered Community design.
It should also be noted that negotiations are ongoing with the United Kingdom to hopefully establish a withdrawal agreement, but there is still no further information regarding how this withdrawal agreement will apply.