Brexit will have a major effect on both existing and future intellectual property rights in the UK.
The main impact will be on those rights that have “unitary effect” across all 28 EU member states, i.e. where a single right applies across the EU as if the EU were one country. These are the EU Trade Mark, the Registered Community Design (RCD), the Unregistered Community Design (UCD) and the forthcoming European Patent with Unitary Effect.
Under current EU laws none of these rights can cover a territory that is not an EU member state, and so after Brexit they will all cease to apply in the UK. This means they will no longer be infringed by acts carried out in the UK.
The UK Government is likely to introduce specific legislation to provide that existing unitary trade marks and designs continue to have effect in the UK as if they were UK national rights, but to date no proposals have been published.
In the meantime businesses need to prepare. Those that intend to use their mark or design in the other 27 member states after Brexit should continue to apply for EU rights. Those that only intend to use them in the UK should apply for a UK national registration. Applicants for new marks or designs which are to be used in the UK and the rest of the EU should apply for a separate UK mark or design now as well as an EUTM or RCD, in order to avoid the need to rely on whatever procedure is introduced on Brexit and to avoid any attendant delays or problems. Owners of existing EU rights should also consider applying now for separate UK rights for the same reason.
Following Brexit, the UK will remain a member of the World Intellectual Property Organization
(WIPO) which handles international trade mark registrations. Filing an application through WIPO may be the most appropriate option for a business wishing to register trade marks in the UK, EU and countries such as Japan, China and the USA.
The Unitary Patent
is a new unitary right that is due to come into force at the end of 2017 or beginning of 2018, with its own special set of courts (the Unified Patent Court or UPC), one division of which will be based in London.
The UP can currently only take effect in EU member states and the UPC cannot be based in a non-EU member state. Therefore, unless further agreement is reached, on withdrawal UPs will cease to have effect in the UK and the UK’s section of the UPC will have to move away from London.
Continued UK participation in the UPC and UP would require a new international agreement between the UK and the participating EU member states, and would require the UK to submit to EU law and the jurisdiction of the European Court in proceedings before the UPC.
It is therefore likely that many businesses will opt out of the UP regime until its future is more certain.