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The Brexit Effects

Issued: January 06 2017

Britain’s departure from the European Union – Brexit – will, for now, lead to a period of uncertainty for intellectual property.

Britain’s departure from the European Union – Brexit – will, for now, lead to a period of uncertainty for intellectual property, a collection of private practice lawyers and government officials said at the Business of IP Asia Forum in Hong Kong in December.


Speaking at the session Brexit and IP: Impacts and Implications, Ros Lynch, director of copyright and IP enforcement at the United Kingdom Intellectual Property Office, said that despite the uncertainty, Brexit has not, as of yet, had an impact on intellectual property rights enforcement. “Trademarks, etc, will still be effective in the UK. Even after Brexit, people in the UK will still be able to register community designs and the UK copyright laws will continue to comply with the EU standards,” Lynch said.


Despite Lynch’s reassurances, “uncertainties including lengthy exit negotiations and whether unitary patents and the Unified Patent Court will still include the UK in the long term remain,” said John Brunner, a partner at Carpmaels & Ransford in London.


A unitary patent is a new patent issued by EPO to cover most of the EU. “It saves costs and can only be enforced via the UPC,” Brunner says. “The UPC is the new patent court for most EU states but whether it is simpler and cheaper remains uncertain to some. The jurisdiction of the UPC is the unitary patents as well as all ‘classical’ European patents unless they are opted out. In other words, the UPC would have no jurisdiction over the UK patents due to Brexit.”


The UK is expected to ratify the UPC in early 2017, and Germany will likely ratify shortly after. The UP/UPC system would become effective three months after the German ratification, perhaps in mid to late 2017, Brunner says. “We do not know whether the UK will be part of the UP/UPC system in the long term, though, due to Brexit. There are many issues to resolve,” he said.


If the UP/UPC proceeds with the UK, the country will remain a desirable country for investment, but the questions remain whether that would be legally – and politically – possible, Brunner said. “If the UP/UPC proceeds with the UK but the country withdraws, it would be legally and politically possible initially but complicated on the UK leaving. Uncertainty will also shroud industries.”


Brunner says that if the UK remains in the UP/UPC after Brexit takes place, the Court of Justice of the European Union will have jurisdiction over the UK for patent law, but a number of concerns will be raised, including EU/ UK exhaustion issues and the question of how disputes which involve the EU/ UK competition law will be handled via the UPC. It is also unknown how supplementary protection certificates will be handled.


If the UK does not remain in the UP/ UPC after Brexit takes place, the UK will still be part of the EPO system, so UK patent protection will be possible by nationally validating a European patent in the UK after grant, as happens now, Brunner says. “But what happens to the UPs which have granted before Brexit? What about pending UPC litigation which has commenced in the UPC (including the UK) before Brexit? What about injunctions granted on the basis of UPC decisions?”


It’s no clearer on the matter of the UK’s involvement in the EU trademark scheme, says Imogen Fowler, a partner at Hogan Lovells in Alicante. “However, the UK legislation enacted which deems the EU trademarks to continue covering the UK, with no action required, is highly unlikely.”


Full conversion process requiring reexamination by the UKIPO will also be unlikely, Fowler said. “Administrative re-registration of an EU trademark for the UK is possible, though, as only minor action is required (e.g. simple form).”


As far as registered community designs and unregistered community designs, “retaining priority date will be particularly important for RCDs because of the novelty requirement – you can’t simply re-file after Brexit,” Fowler said. “Questions are also raised if RCDs should be revalidated or re-registered, and whether there is automatic extension of protection. There will be no equivalent to UCDs in the UK law after Brexit.”


Companies should beware of territorial coverage, use requirements and oppositions.


For territorial coverage, there is no one-size-fits-all solution, Fowler said. “One must first conduct a cost-versusrisk analysis and take a measured approach to identify the key UK brands, [then] file parallel UK applications and never let UK registrations lapse.”


For use requirements, “one must be aware that use in the UK is unlikely to support use of an EU trademark and should review the territorial scope of use of EU trademarks and make supplemental national filings where appropriate,” said Fowler.


For opposition, “UK rights will not entitle you to oppose EU trademark applications and vice versa,” said Fowler.


Fowler is also concerned about enforcement. “If the mark is only used in the UK, is there enforceability in the rest of the EU? If it is mainly used in the EU, is there enforceability in the UK post-Brexit? ” 

Other EU-wide injunction headaches kick in when the infringer is in the UK and the brand owner is overseas, Fowler says. “Problems such as [a lack of] forum options, infringers dragging out post-Brexit and whether to transfer proceedings to another EU court and how to have a new action in the EU post-Brexit emerge.”


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