Besides coverage of the UEFA-championship, news of the UK vote on "Brexit" dominated the news last week.
While it is too early for an in-depth analysis of the ramifications of a possible "Brexit" on IP rights – not only because despite the vote it is not yet decided whether the UK will in fact withdraw from the EU, but also because the specific mechanisms of such withdrawal will most likely be regulated in an agreement pursuant to Art 50 (2) of the Lisbon Treaty – enterprises should also monitor the developments in this field of law. Below is a small foretaste on issues related to key IP-rights:
European Union trademarks and Designs:
European Union Trade Marks (EUTM) confer trademark protection throughout the EU. Accordingly, if and as soon as the UK ceases to be a member of the EU, EUTM would not – under the current regime – cover the territory of the UK anymore. The most likely scenario in case of a "Brexit" is that some kind of conversion procedure will be implemented allowing continued trademark protection on the basis of national UK trademarks taking over priority (or seniority) dates from the respective EUTM. EUTM owners will have to be alert, in particular regarding a likely deadline provided under such a conversion procedure.
Moreover, EUTM owners should check contractual agreements (license agreements, demarcation agreements, pledge agreements etc) related to their EUTM in order to assess whether such are "Brexit"-proof.
There are many more aspects that EUTM owners will have to take into account in the event of a "Brexit", inter alia genuine use of the (remaining) EUTM in case of a business focus on the UK, scope of awards (injunctions), effects on pending infringement proceedings, or on opposition or cancellation proceedings based on national UK trademarks, that warrant close monitoring of the developments and evaluation of an enterprise's trademark portfolio.
Similar considerations apply to Registered (and unregistered) Community Designs.
Patents:
As the European Patent Convention is independent of the European Union, the UK would still remain a contracting state of this convention after a "Brexit". However, the Unified Patent Court (UPC) and the Unitary Patent (both hitherto envisaged to be available in 2017) will likely be delayed for all participating countries, unless the UK – as long as it is still member of the EU – would decide to quickly ratify the UPC Agreement.
By Adolf Zemann, Attorney at Law, Schoenherr
