April 23, 2020
Brexit is a call to action for IP proprietors – especially on EU trademark and Community design matters. Kolster’s European Trademark and Design Attorney Kristiina Kaislisto and European Patent Attorney Marjut Honkasalo explain the impacts of Brexit on trademarks, design patents and patents.
Here’s the deal: The UK departed the EU on 31 January 2020. Until the transition period ends in December 2020, UK stays on the European Single Market and customs union and operates under EU law.
“The Intellectual Property (IP) system concerning EU trademarks and designs will continue as usual until the end of the transition period. However, in some cases a separate national application for the UK is required”, says European Trademark and Design Attorney Kristiina Kaislisto.
The EU trademark system provides IP protection in all EU countries with one application. The legal effect of the registration is therefore equal throughout the EU. After Brexit, UK is no longer automatically included in the scope of protection of the EU registration.
“If an EU trademark or design is registered before the end of the transition period, no separate national applications need to be filed for the UK. EU trademark and design registrations that already have both a registration number and date will automatically convert to include UK into their scope of protection”, says Kaislisto.
However, with the tens of thousands of currently pending EU trademark and design applications, the final registration date matters. Vigilance from the applicant is required in cases where the registration won’t be issued before the end of the transition period.
“In those cases, companies should consider filing a separate national application in the UK in advance. Because of its additional costs, companies should consider whether the UK is a market essential for their business operations. If it is, national IP protection in the UK is certainly necessary”, Kaislisto says.
“This is something companies filing for EU trademarks and designs must be aware of, since they must act upon it by themselves. These considerations apply to all companies whose EU trademark and design applications have an application date but not a registration date.”
Another consequence of Brexit is the new trade deal, currently under negotiation between the UK and the EU. After the first draft was left on 18th of March, EU chief Brexit negotiator Michel Barnier got infected with the coronavirus, putting the negotiations effectively on hold. Despite the attempts to carry the negotiations on through video conferences, the end result will most likely be delayed.
“The coronavirus had an unfortunate timing, since it may very well make the Brexit terms harsher than they otherwise would’ve been. If we end up with a no-deal Brexit, its consequences to moving goods and services and therefore the impacts on goods carrying trademarks and designs cannot be predicted beforehand”, Kaislisto says.
The UK has until June to seek for an extension to the transition period. However, in the country’s current tumultuous political situation, seeking an extension seems an unlikely option.
“We can only wait and see what happens. Many of our customers are EU IP-rightholders, and we’ll keep actively informing and advising them on the situation and how to proceed with the national applications in the UK. We’ll share information on the turns of events as soon as it becomes available to us.”
“One of the easiest things about Brexit must be its effects on patents, since virtually nothing changes. Filing for patents, prosecution of pending patent applications and granted patents remain the same”, says European Patent Attorney Marjut Honkasalo.
As UK remains an EPC member state, it’ll still be possible to file for patents in the UK through the European Patent Office EPO. But Brexit may have a potential impact on the exhaustion of rights.
“If a patent protected product is sold in e.g. Germany, it can move freely in EU countries. Brexit may potentially impose limitations on importing goods from UK to EU and the other way around. The UK has previously stated their wish to continue on as if they still were part of EU, therefore the rights would remain exhausted. However, until official deals are signed, nothing is set in stone”, says Honkasalo.
Another potential impact of Brexit might be seen on the Supplementary Protection Certificates (SPC). Since each country has their own regulations regarding the SPC, they may undergo some changes while new laws and regulations form around Brexit.
“There is no way to predict what these changes could be. For the UK’s SPC, we’ll have to wait and see what they come up with. No precautionary measures can be taken against changes we cannot foresee. For patents, this potential no-deal Brexit entails having a couple of open-ended questions and patiently waiting for things to play out. But for the time being, we can carry on as we’re used to.”
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