Effect of Brexit on IP protection

Effect of Brexit on IP protection

Contents Introduction 1 Trade Marks 2 European Union Trade Marks 4 International Trade Marks 6 Domain Names 8 Other Consequences 9

Introduction Formal procedure for UK s departure from the EU Following a referendum vote on 23 June 2016, the British electorate has elected to leave the EU. The referendum result is advisory rather than legally binding. It is possible that the result may be ignored or overturned, for example by a Parliamentary vote, a new General Election fought on the single issue of EU membership, or a second referendum. However, at present it is considered politically unlikely that the referendum result will be set aside by the UK. Assuming that the Government implements the result of the referendum, the start of the exit process will begin only when the Government invokes Article 50 of the Lisbon Treaty, which, at present, is expected in early 2017. This governs a member state s withdrawal from the Union and will be invoked when the UK formally notifies the EU of its intention to leave. Article 50 provides for the negotiation of an agreement which sets out the arrangements for withdrawal and should be concluded within two years from formal notification being served, though this two-year period may be extended by unanimous agreement among the EU member states. As a consequence of the Article 50 procedure, Britain will remain a member of the EU (and subject to its legislation) until at least 2019 and possibly later. Legislation in effect until UK exits the EU Until such time as Britain exits the EU, which is some years away, EU legislation remains in effect and no changes to existing IP legislation are expected. As a consequence, no alternative arrangements are necessary for seeking IP protection in the UK. However, thought should be given to changes that may occur and changes of practice that might be beneficial in anticipation of the UK s exit. The following pages set out the current and anticipated future rules relating to IP protection in the UK and elsewhere, assuming the UK exits the EU, and how Brexit may impact on that protection. Dehns and the EU For many decades Dehns has served its clients by securing and defending their Intellectual Property internationally and in particular in Europe. This will continue even in the event of Brexit and our focus on assisting our clients to secure and uphold protection in Europe will remain. Dehns is a European firm and, as part of our commitment to providing a pan- European service to our clients, we established an office in the EU (in Germany) over 20 years ago. Our UK and EU-based attorneys will continue to provide a full and comprehensive service to our clients before and after Brexit. Contact Dehns T: +44 (0)20 7632 7200 E: ejones@dehns.com W: www.dehns.com 1

Trade Marks: UK Trade Marks 2

There is no anticipated change to UK practice as a result of Brexit. The UK Intellectual Property Office (UK IPO) will continue to handle applications for the registration of trade marks in the UK, and Registered UK Trade Mark Attorneys can continue to represent clients before the UK IPO as they do now. Do I need to do anything now? No. No changes are anticipated. What can Dehns do for me? Dehns can continue to represent you in all matters before the UK IPO in the usual manner. 3

European Union Trade Marks (EUTMs) A European Trade Mark (EUTM) registration is obtained from the EUIPO (the European Union Intellectual Property Office, based in Alicante, Spain), and is a unitary right which automatically covers all 28 Member States of the European Union. Once filed, a EUTM application is examined by the EUIPO to ensure that it satisfies certain official requirements, and the EUIPO carries out a search for conflicting earlier EUTMs, the results of which are sent to the Applicant for information purposes only. After a EUTM application has passed the examination stage, it is published. If no opposition is filed during the publication period, or an opposition is filed but successfully overcome, the EUTM will proceed to registration, thereby providing the owner with trade mark protection throughout the EU for a period of ten years, renewable every 10 years. As a member of the EU, the UK is automatically covered by any EUTM applications or registrations. Who can act as a representative before the EUIPO? Any natural person who is a national of an EEA Member State, has his/her place of business or employment in an EEA Member State, and is entitled to represent natural or legal persons before the national IP Office of an EEA Member State, may act as a representative before the EUIPO. There is no requirement that the representative satisfy each of these requirements in the same EEA Member State. Who is entitled to own a EUTM? Any natural or legal person, including authorities established under public law, can be the proprietor of a EUTM. There is no requirement that the owner of a EUTM be a national of, or domiciled in, a Member State of the EEA. Are my EUTMs still protected in the UK? Yes. Until the UK leaves the EU, there is no change in terms of the protection afforded by a EUTM, and these will continue to confer protection in all of the EU Member States, including the UK. When Brexit occurs, it is expected that transitional provisions will be enacted whereby existing EUTMs can be converted (possibly automatically) into, or reregistered as, national UK Trade Mark registrations, thereby retaining their original filing or priority date. Protection for the remaining EU Member States will remain unaffected. 4

Do I need to do anything now? No. As noted above, nothing has changed in terms of the protection conferred by any existing EUTM applications/registrations, and it is anticipated that transitional provisions will be brought in to ensure that owners of existing EUTMs do not lose any UK rights as a result of the UK s exit from the EU. However, because of uncertainty surrounding the detail of the above-mentioned transitional provisions, in terms of the costs, procedures and timescales involved, as well as increasing uncertainty surrounding the issue of the extent to which use of a trade mark in one EU Member State is sufficient to maintain a valid EUTM registration, if the UK is an important market for you, and you own EU registrations of trade marks that are not already protected separately in the UK, you might wish to consider putting in place separate protection for those trade marks now. This may be particularly advisable if you believe that an existing EUTM registration might be potentially vulnerable to cancellation as a result of its geographically limited use within the EU to date. How will I obtain protection for my trade marks in the UK following Brexit? New EUTM applications that are filed after the UK has left the EU will not extend to the UK. Thus, should you wish to protect any new trade marks in the UK and other EU Member States, it will be necessary to file a EUTM application and a separate UK application (or designate the UK under an International Application/Registration). What can Dehns do for me? For now nothing changes, and our Trade Mark Attorneys can continue to act for you in connection with all trade mark matters before the EUIPO. We are also in the fortunate position that because we have an office in Germany, we shall still be able to satisfy the criteria for acting as representatives before the EUIPO when the UK leaves the EU, and thus continue handling all of your EUTM matters. Similarly, for the reasons outlined above, should you be considering seeking protection for any new marks in the UK and the other EU Member States in the near future, there may be some merit in filing a EUTM application and a separate UK application (or designating the UK under an International Application/Registration). 5

International Trade Marks The Madrid Agreement Concerning the International Registration of Marks ( the Madrid Agreement), and the Protocol Relating to the Madrid Agreement ( the Madrid Protocol ), referred to jointly as the Madrid System, provide for the international registration of trade marks. The system is administered by the World Intellectual Property Organization (WIPO). As this is an international treaty, it is independent of the UK s membership of the EU. The Madrid System allows for the central filing of an application for the international registration of a trade mark, designating any number of the 97 Contracting Parties. Where an International Application complies with the applicable requirements, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO then notifies each Contracting Party in which protection has been requested. Each designation is then examined by the relevant national Intellectual Property Office according to local law/practice and, if successful, protection is granted in that territory. Both the UK and EU are Contracting Parties to the Madrid Protocol. There is no reason to expect any change to the Madrid System, the UK s participation in that system, or the practice before the various Offices carrying out services in relation to International Trade Mark Registrations as a result of Brexit. Who can act as a representative before WIPO? The Madrid System does not provide for any requirement as to professional qualification, nationality, residence or domicile in order to be appointed as a representative before WIPO. Therefore, there is no official list of representatives before WIPO. However, before you can file an International Application, you need to have already registered, or have filed an application to register, the same mark in your home IP office. The International Application has to be submitted through this same IP Office, which then certifies the Application and forwards it to WIPO. Your WIPO representative must therefore be able to file applications in the territory of your home IP office. Are my International Registrations still protected in the UK? Yes. If you own existing International Registrations that are protected as EUTMs, nothing will change until such time as the UK leaves the EU, and your International Registration will continue to be protected in all EU Member States, including the UK. As noted above in the context of EUTMs, it is expected that transitional provisions will be enacted whereby, following Brexit, EU designations of International Registrations can be converted into, or re-registered as, national UK Trade Mark registrations, retaining their original filing or priority date. Again, protection for the remaining 6

EU Member States will remain unaffected. If none of your International Registrations are protected as EUTMs, then you do not need to do anything, as they will not be affected by the UK s exit from the EU. In particular, it is important to note that International Registrations that specifically designate the UK will be unaffected by the UK leaving the EU. Do I need to do anything now? No. As noted above, nothing has changed in terms of the protection conferred by any existing EUTMs obtained via the Madrid System of International Registration, and it is anticipated that transitional provisions will be brought in to ensure that UK owners of existing EUTMs (including those obtained under the Madrid System) do not lose any rights as a result of the UK s exit from the EU. However, for the reasons outlined above in the context of EUTMs, if you currently own an International Registration that is protected in the EU but not protected separately in the UK, and you view the UK as an important market, you might wish to consider requesting a subsequent designation in the UK under your International Registration, or filing a separate UK application for the relevant mark(s) now. Similarly, should you be considering filing a new International Application in the near future, and are looking for protection in the UK and other EU Member States, there may be some merit in designating the EU and UK separately under the International Application. How will I obtain protection for my trade marks in the UK under an International Registration following Brexit? New International Applications designating the EU that are filed after the UK has left the EU will not extend to the UK. Thus, if protection is required in the UK, a separate UK designation under the International Application will be required if you do not already have a UK application or registration. In many cases, UK clients will already have a UK application or registration of the relevant mark, as this will be needed to serve as the home application/ registration upon which the International Application will be based. What can Dehns do for me? All of our Trade Mark Attorneys are qualified UK and EU Trade Mark Attorneys and can file and prosecute International Applications based on either UK or EUTM applications/registrations, and represent clients before the UKIPO, EUIPO and WIPO in connection with such matters, instructing attorneys in designated territories in the event of local representation being required. When the UK leaves the EU, we shall be able to continue filing and prosecuting International Applications based on UK applications/registrations and designating any of the 97 Contracting Parties, and continue representing clients before the UKIPO and WIPO in connection therewith, in the usual manner. Since we have an office in Germany and will thus continue to satisfy the requirements for acting as representatives before the EUIPO, we shall also be able to continue handling International Applications/ Registrations based on EUTMs on behalf of our clients, and the prosecution of EU designations before the EUIPO where necessary. 7

Domain Names For now, nothing changes, and no immediate action will be taken against.eu domain names that have been registered by residents of the UK. At this stage, it is unclear whether UK registrants will still be eligible to register or hold.eu domains once the UK has left the EU. According to the current eligibility criteria for.eu names, a potential registrant must be either: an undertaking having its registered office, central administration or principal place of business within the European Union, Norway, Iceland or Liechtenstein, or an organisation established within the European Union, Norway, Iceland or Liechtenstein without prejudice to the application of national law, or a natural person resident within the European Union, Norway, Iceland or Liechtenstein. In principle, EURid (the registry manager of.eu domain names) may revoke a domain name at its own discretion in case the registrant does not, or no longer, fulfils the above eligibility criteria. Following Brexit, many large corporations will still be able to meet these criteria by reason of having subsidiaries in other EU territories. However, individuals and smaller businesses may face more of a challenge. Ultimately, it will be for the European Commission to decide how, EURid is to handle the issue of the ownership of.eu domains by UK registrants following the UK s exit from the EU, but further guidance is unlikely to forthcoming for some time. 8

Other consequences of Brexit from an IP perspective Pan-European Injunctions It is possible that, following Brexit, any existing pan-european injunctions based on EUTM or RCD rights would cease to apply in the UK, in which case a EUTM or RCD owner would either need to bring proceedings before the UK courts seeking a fresh injunction in order to prevent a UK infringement that was previously prohibited by the pan-european injunction, or seek an extension of the pan-european injunction to cover the UK. Following Brexit, any EUTM or RCD owner wishing to apply for an injunction in respect of an infringement occurring in one or more EU Member States and in the UK would need to bring two separate sets of proceedings one before a designated EUTM or Community Design court and one before the UK courts. Contracts, Agreements, Undertakings etc. Clients who are party to, or the beneficiaries of, co-existence agreements, licences, undertakings, consents or other contracts should carefully review these and identify, in particular, anywhere the relevant territory is defined by reference simply to the European Union. Whilst it is likely that the intention of the parties at the time of signature will, in the majority of cases, be determinative in construing the territorial scope of such an Agreement following Brexit, this will not necessarily be the case, as other factors may come into play. In cases where the issue of the territorial scope of an Agreement may be in doubt post-brexit, clients should seek legal advice. In some cases it may be appropriate and advisable to have clarificatory side letters executed by the parties as soon as possible. 9

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