What impact will Brexit have on your trademarks?
Any person or company holding an EU Trademark (EUTM) must review its position in light of the United Kingdom leaving the European Union at midnight on Friday, March 29, 2019. The UK government may agree to an arrangement whereby existing rights will automatically transfer, with or without a fee, but currently there is no agreement in place. It has been the practice that if a trademark was used in the UK and Ireland, that should constitute sufficient use to enjoy protection in all member states. When the UK leaves the EU, a business may have insufficient use of its EUTM elsewhere in the EU to meet the threshold requirement, thus EU-wide protection could be lost.
A Registered Community Design (RCD) provides wide-range design protection in the EU, including furniture, bicycles, chocolates and clothing and fashion appliques. After the UK leaves the EU, the RCD will no longer be enforceable in the UK. Small to medium-sized enterprises (SME) will need to know how to protect designs in the UK post-Brexit. Businesses and companies with EU domain names will need to identify such names in their portfolio and decide if it is necessary to transfer ownership into an entity placed within the European Economic Area.
If the UK is a key market for the owner of an EU trademark who does not currently have a separate UK trademark, filing a UK trademark application now is necessary in order to ensure continued trademark protection in the UK regardless of the outcome of the withdrawal process. Businesses are taking action now to protect their intellectual property rights. UK trademark filings by US applicants have increased by over 150%, filings from China by over 175% and filings from Canada by about 100%. Although it is hoped that a settlement will make provision for the re-registration of European Union Trade Marks and Registered Community Designs before the UK Intellectual Property Office, if an agreement is not reached, all EU Trade Marks and all Registered Community Designs will become ineffective in the UK after March 29, 2019.
In addition, SMEs will need to know what effect Brexit will have on IP licenses and agreements and it will be important to ensure that any agreements or licenses that are negotiated prior to March 2019 properly address the effect of the UK’s departure from the EU to minimize trading uncertainty. It is not yet clear what effect Brexit will have on the extensive scheme of EU protections for geographical indications, which include Protected Designations of Origin and Protected Geographical Indications. Although some of these EU schemes are open to non-EU applicants, the “home” country must provide reciprocal recognition.
What impact will Brexit have on your patents?
Inventors seeking to protect their inventions in Europe may not need to adjust their filing strategies because of Brexit. After the UK leaves the EU, it will still be possible for inventors to obtain protection for their inventions in the UK by filing patent applications directly at the UK Intellectual Property Office. Brexit will have no effect on UK patents granted by the UK Intellectual Property Office. Inventors will still be able to obtain protection for their inventions in other European countries by filing European Patent Applications at the European Patent Office.
Omni Legal Group is here to review and protect your intellectual property position.