On 23 June 2016, the United Kingdom said “yes” to a Brexit.
This withdrawal of the UK shall inevitably have repercussions on European intellectual property titles, and notably European Trademarks and models.
Today, protection of trademarks and models across the entire territory of the European Union, comprising of 28 countries, is possible through a single trademak or model filing. Community stipulations provide for the extension of this unitary protection upon each entry of a state to the EU.
However, there is no provision for the case of withdrawal of one or more States.
Fears regarding the consequences of a Brexit on trademarks and models are the following:
By filing for a trademark or design or model in the EU, applicants will not enjoy protection in the United Kingdom.
In order to protect their mark or their model in this territory, they will have to file a national application before the IPO (Intellectual Property Office of the United Kingdom) or an international application with WIPO designating the United Kingdom.
With respect to existing EU trademarks and designs and models, holders may automatically lose their protection in the UK if a national filing in addition to that of the EU was not made in the UK.
However, it is likely that they will be able to request the conversion of their European trademark into a British national mark, keeping in mind that this implies further examination by the IPO and payment of official fees. It is also likely that a specific procedure will be put in place for European designs and models.
We can nevertheless hope that transitional measures will be put into place particularly through the European Economic Area (EEA), and will include, for example, the conversion of EU intellectual property rights occurring automatically and not at the request of holders.
Naturally, we will be sure to inform you of any developments in this matter.
In this uncertain environment, and if the United Kingdom is a territory of interest to you, as precautionary measures we recommend you:
- file your marks and models by the national route in addition to the European filing, especially for future filings.
- maintain your rights on existing British trademark filings even if you have claimed their priority in the European filing.
Do not hesitate to seek out our services so that we may provide you with all the information and advice pertinent to your interests.