Possible impact of Brexit on European industrial property rights
On March 29, 2017 the electorate of the United Kingdom submitted the declaration to resign from the European Union. As it currently stands, the departure is expected to come into effect in March 2019.
It is anticipated that Brexit will have an impact on the trademark protection that currently applies to European Union trademarks (EU trademarks) in the United Kingdom. It is still unclear as to how exactly the departure of the United Kingdom will affect the existing protection of EU trademarks. In the main, the following scenarios are conceivable:
EU trademarks are no longer effective in the United Kingdom. Replacements can be obtained by means of national British trademarks or IR trademarks designating Great Britain without the possibility to claim priority of corresponding EU trademarks;
The same scenario as described above, but with the possibility to claim priority of the EU trademark existent at the time at which Brexit comes into effect, with regards to a new national registration or the IR designation of Great Britain;
- An agreement is made between the United Kingdom and the European Union pursuant to which EU trademarks shall remain valid in the United Kingdom despite Brexit.
We deem the latter scenario unlikely, as it would contradict the notion of the United Kingdom's departure from the EU.
We believe the second scenario to be likely, as it would prevent a scramble for the registration of trademarks in the British trademark register and the large number of disputes this would be likely to cause. Under the good assumption that this second scenario comes to pass, one could wait until the legal framework has been set up and the corresponding registration and/or conversion procedures established. However, owners of EU trademarks who do not wish to rely on this outcome could claim corresponding trademark protection in the United Kingdom in advance, so as to secure earliest possible priority. This may be done by registering a national trademark at the UK Intellectual Property Office or via a (subsequent) extension of an international registration (IR trademark). In particular, if the filing of an international registration is planned, which should be effective in the European Union, the United Kingdom could be designated (relatively inexpensively) as a party of the international trademark.
With regards to registered Community designs (EU designs), the above applies accordingly. Owners of a registered Community design who do not wish to rely on the establishment of a procedure for the conversion into a national registered design could apply for the registration of a national design in the United Kingdom. Unfortunately, international registered designs cannot be extended to the United Kingdom, as it did not accede to the Hague Agreement Concerning the International Deposit of Industrial Designs.