BREXIT: What IP owners should do now
Despite existing EU trademarks and designs, intellectual property rights should be registered locally in UK. If no treaty is reached between the EU and the UK by March 29, 2019 to the effect that currently valid EU-wide intellectual property rights (at least temporarily) also applying in UK after March 29, 2019, these intellectual property rights will no longer have any effect in UK as of March 30, 2019.
By: Normen Lang
Despite the pending negotiations on an treaty regulating, among other things, the legal consequences of Britain's withdrawal from the EU, the European Commission itself is now pointing out uncertainties regarding the validity of EU trademark and EU designs in the UK after March 29, 2019: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/news/Brexit_preparedness_notice_on_IP.pdf In its Notice of December 01, 2017, the Commission emphasizes that not only the EU and national authorities must prepare themselves for BREXIT, but also private parties and thus the owners of EU trademarks and designs.
If no treaty is reached between the EU and the UK by March 29, 2019 to the effect that currently valid EU-wide intellectual property rights (at least temporarily) also applying in UK after March 29, 2019, these intellectual property rights will no longer have any effect in UK as of March 30, 2019.
At worst, this means in particular that:
- third parties that have acquired Trademarks in the meantime through registration or use in the UK (“intermediate rights") may sue proprietors of EU trademarks because of trademark infringement when they use their EU trademarks in the UK. The proprietors of the EU trade marks will then no longer be able to rely on their older EU trade marks and will have to stop using their (actually earlier acquired) trade mark due to claims based on the "intermediate rights" existing in the United Kingdom or can only continue to use its trademark under license.
- EU trademarks and EU designs can no longer be used to combat infringements of intellectual property rights in the United Kingdom
- an EU trademark that is not used outside the UK is becoming vulnerable for cancellation due to non-use. After UK's withdrawal from the EU, EU trademarks that are only used in the UK are no longer considered as to be used within the EU.
In order to avoid possible uncertainties, local trademark applications in UK should be filed now.
Designs should also be registered locally in the UK. If design application has already been filed but no national design applications have been filed in the United Kingdom, it is possible to file a design application in UK within 6 months of the first filing date, claiming the priority of the first filing.