The Brexit : will you need to proceed with new registrations and incurr additional costs, to maintain protection of your intellectual properties rights ?

While awaiting the effective leave of the UK from the EU, the holders of intellectual property rights must audit their intellectual properties’ portfolio. This audit is necessary to anticipate the appropriate steps to maintain protection in the UK and amend the existing contracts.

Trademark, designs and models 'impact

The EU trademark and the European design and model constitutes a single ownership title across the EU which offers protection in the 28 Member States marque de l’UE.

 Two hypothetical but logic consequences :

  • The European titles which have already been filed and which by definition cover the United Kingdom will no longer be provided protection on this territory. In order not to loose their precedence, their beneficiaries will have to proceed with another national registration through the IPO, the British office, unless the rights are automatically converted in a national title.
  • The upcoming European applications will no longer cover the United Kingdom. Thus it will be necessary to proceed with a national application in this country on top of a European application.

In addition an international application could be considered to protect a trademark or a design and model in the United Kingdom, since this country is signatory to the Madrid system, organizing worldwide registration and trademark management, as well as to the Hague system for designs and models.

This is the reason why each holder will have to check his portfolio in  order to determine the need to double the European registration with a British one which will probably entail additional costs.

 
Patents' impact

  • The European patents should not be concerned because they are delivered by the European Patent Office (EPO), which is an institution independent from the EU.
  • The future patent which will be a initary document will not cover the United Kingdom: the holder of a patent who wishes to benefit from a European protection will need to obtain a national patent for the United Kingdom and a unitary patent for  the other countries of the EU. The applicant will not be able to benefit from the single tax regime and will have to bear additional costs.


Contracts' impact

Caution should be exercised on contracts which deal with Intellectual Property rights.

The parties will have to ensure that the licenses and coexistence agreements cover the UK  territory and, if needed, amendments will have to be entered into.

United Kingdom territory and failing which amendment will have to be concluded.