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24.06.2016 11:12

BREXIT - what will happen with EU Trademarks and Community Designs?

When the results of all districts were in early this morning, it became obvious: the British public voted “leave” in yesterday´s UK referendum and the United Kingdom will become the first country to ever withdraw from the European Union. Owners of EU trademarks and Community Designs will thus be well advised to review - and maybe amend - their IP filing strategy.

By: Michael Jost

Owners of EU trademarks and Community Designs will thus be well advised to review - and maybe amend - their IP filing strategy.

At the very moment, it is nearly impossible to figure out what the consequences of this decision may be with regard to the future - economical - cooperation between the EU and the UK. In fact, the voters´ decision will not be put into effect immediately, but will mark the starting point for year-long negotiations between UK and the EU regarding the form and the conditions of the BREXIT. Article 50 of the Treaty on European Union provides further details re. a withdrawal from the Union.

And, of course, there is quite a number of different scenarios: one of them would be for the UK to follow the Norwegian way, that is, to stay closely integrated with the EU as a member of the EFTA and the European Economic Area. At the other end of the spectrum is the UK breaking from the EU completely. And, in addition, there are lots of possible in-betweens. It will take years to find answers to these questions - and to what result they will be solved one day, nobody knows for sure at the moment.

This especially applies with regard to trademark law and design law. Both fields have been harmonized over the last decades, standardizing legal procedures and legal provisions throughout the EU. And in both fields, intellectual property rights can be protected in the entire Union by a single legal instrument: the European Union Trademark und the Registered Community Design.

In principle, with the UK leaving the Union, these instruments will cease to have effect in Great Britain, and it will be one of the tasks of the negotiations to find an acceptable solution for the future of EU trademarks and designs in the UK. For example, there may be transitional arrangements allowing owners of EU trademarks or EU designs to convert their rights into UK national trademarks or designs, either when the Britain´s withdrawal from the Union becomes effective or when the respective rights are due to renewal, claiming the priority of the EU trademark or design (which itself remains valid in all other 27 member states).

But whatever the result of the negotiations may be, it is clear right now that with the UK leaving the Union, the decisions of the Court of Justice and the General Court re. trademark law and design law, will - most probably - cease to have immediate effect in the UK and will be replaced by the decisions of the UK national courts. There will, of course, be a growing distance between UK and EU case law and legal systems.

Thus, the question for owners of EU trademarks and designs is how to react on Britain´s “leave”-vote. One - and maybe the best - way is to apply for identical national UK trademarks and designs in the UK right now, trying to become independent from future developments and to avoid any negative impact the upcoming discussions and negotiations between the UK and the EU may have. However, owners of Community Designs will have to keep in mind that applying for a UK national design right will only be possible within 12 months max. from the date of the application of the Community Design, as otherwise the former will not be regarded as “new” anymore.

We trust that quite a number of owners of EU trademarks and EU designs will act in this way to safeguard their intellectual property rights in the UK. If so, there will very easily be a certain backlog on the part of the UKIPO responsible for the registration of UK national intellectual property rights. Therefore, trademark owners and design owners will be well advised not to waste too much time to reconsider their IP filing strategy.

Or, as the Britons may put it: time is of the essence!

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