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Brexit and IP – how bad could it be?

09 Feb 2018

What happens if no deal is reached about the Post-Brexit IP landscape for pre-existing EU trade marks and registered designs?

If you read my earlier article IP & Brexit: A View From Rights Holders, you will know what a large number of high profile owners of intellectual property would like to see from Brexit.

In short they would like:

  1. EU IP rights, in existence prior to Brexit, to continue to provide protection in the UK, however that may be achieved
  2. Rights holders’ should not have to suffer any significant cost or administrative burden to maintain existing rights.

We wait to see if that can be achieved.  In the meantime, the EUIPO has made clear how bleak the post-Brexit IP landscape could look.  In a new set of FAQs the EUIPO tells us what the default position would be if no deal is reached and if no new provisions are made in the EU or in the UK to deal with the ongoing treatment of pre-existing EU trade marks and registered designs.

In the above scenario, here is what will happen post-Brexit:

  1. EU trade marks will cease to give protection in the UK;
  2. If you hold an EU TM pre-Brexit you will not have the right to convert it in to a UK trade mark;
  3. EU trade mark courts’ measures will no longer have effect in the UK;
  4. UK courts will no longer be able to take measures affecting the EU with regards to validity of EU trade marks;
  5. It will not be possible to convert an EU trade mark into a UK trade mark post-Brexit. This is something which is currently possible under EU law;
  6. If a UK company with an EUTM wishes to maintain its rights, it will eventually not be able to rely on use of the EUTM in UK, it will have to show use in at least one of the remaining 27 EU member states (“EU27”);
  7. English will continue to be one of the languages of the EUIPO. Brexit will not affect this, given that Ireland and Malta each have English as one of their official languages;
  8. If you need to demonstrate that your trade mark has acquired distinctiveness in order to successfully apply for an EUTM, any distinctiveness acquired through use in the UK post-Brexit will not be taken into consideration;
  9. Any earlier rights existing in the UK, such as registered UK trade marks or any unregistered rights, cannot be relied upon in any proceedings against EUTMs. Although there is an exception to this;
  10. Broadly speaking the above points also apply to Community design rights.

Clearly these potential outcomes could not be more different to those which any sensible rights holder would want. They are miles away from where MARQUES want to be.

If nothing else this publication from the EUIPO gives the UK an urgent reminder (I am sure those who need to know have thought of these points already!) as to the holes which need to be plugged before Brexit takes its full effect. Where it is within our control to do so, the UK will hopefully address these vulnerabilities in its transitional arrangements with the EU27 and implement relevant new UK laws pre-Brexit. Where there are gaps over which the UK will not have control, we rely upon our negotiating team to strike a deal which expressly deals with them. Prior to that it becomes every stakeholder’s responsibility to shout about the IP cover we have to have in place post-Brexit.  

If you have any concerns about ensuring your business is well protected by its IP, please contact:

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