With the referendum concerning the UK’s membership of the European Union looming, how might a British withdrawal affect your intellectual property portfolio?
Whilst the UK Intellectual Property Office administers national intellectual property rights, EU-wide protection can be obtained via such mechanisms as the European Union Trade Mark (EUTM) (formerly the Community Trade Mark) and Community Registered Design. Following a Brexit, EUTMs and Community Registered Designs would likely no longer have effect in the UK. However, it is hoped that there would be some means by which they could continue as a UK right and conversion to a national registration might be one option. Whether that process happened automatically or at the request of the owner would need to be established.
A further consideration if the UK was dropped from the list of territories protected by an EUTM is that the validity of the registration could be impacted. This is especially true in cases where use in the UK represented the main basis for proof of use in the EU. There is some speculation that new legislation could be introduced, whereby existing pre-Brexit EUTMs would be deemed to maintain coverage of the UK, up to the date its EU exit became effective.
Thought should also be given to licensing arrangements covering Community-wide IP rights, if the UK is a territory of interest.
Despite the uncertainty, there is no need to panic, as there would no doubt be a transitional period (particularly given the two year period before Brexit would be implemented), during which time trade mark portfolios could be thoroughly appraised.
For more information on the issues raised in this article or to find out more about how the Intellectual Property team can help you please contact Chloe Fernandez on 0118 952 7247 or email [email protected].
Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.