Impact of Brexit on Pan European Design and Trademark Rights

By: Jeffery P. Langer, Aly Dossa, Christophe Besnard

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In last month’s newsletter, we discussed the effect of Brexit on patent rights (read article here).  As discussed there, other than increased uncertainty as to when and how the Unified Patent Court (UPC) will be implemented, Brexit will not generally disturb the application process for European patent protection.  Applicants will continue to be able to seek central examination of patent applications at the European Patent Office and then nationalize the granted rights into European Patent Organization (EPO) member countries that include major commercial markets in the European Union (EU) such as Germany, France, Italy, and, for now, the United Kingdom, as well as a number of countries which are not members of the EU but nevertheless EPO members such as Switzerland, Norway, Turkey and, maybe one day, the UK.

Unfortunately, the picture is less clear for securing centralized protection for design and trademark rights, at least with respect to the UK after Brexit.  Currently, trademark and design applicants can either obtain national rights in each country (e.g., apply directly for protection in single or multiple countries such as Germany, the UK, and France) or apply for European Union community-wide trademark or design rights that offer protection throughout all of the EU member states.  However, registration of EU community designs and trademarks via the European Union Intellectual Property Office (EUIPO) is available under a different set of treaties than those governing participation in the EPO and is limited to EU members.  With the UK’s decision to withdraw from the EU, it is no longer certain that registration at the EUIPO will extend to the UK.

In view of this, Applicants for design and trademark protection in the UK will need to consider a revised strategy that balances cost and certainty in the near term.  The most conservative strategy assumes that UK coverage will no longer be the default with EUIPO registration only.  Under this most conservative strategy, it will be necessary to file for UK protection independently of the EUIPO or to pursue UK national protection in combination with national protection in other EU countries of interest.  Regardless of whether UK and EUIPO or individual country registration is chosen, additional administrative and higher costs are likely.

Numerous commentators have suggested that some form of a compromise could provide a mechanism for conversion of EU-wide rights into UK national rights, resulting in no loss of rights.  Such a compromise seems very likely.  However, until that compromise is implemented, the most conservative strategy is to protect rights separately in both the UK and the remaining EU members.

On the plus side, filing for trademark and design protection with the UK Intellectual Property Office (UKIPO) will be familiar to those already familiar with practice before the EU Intellectual Property Office (EUIPO).  Costs for extending rights in the UK are relatively low.  As an example, like before the EUIPO it is possible to file multiple designs in a single filing before the UKIPO.  In the near term “bolt-on” protection for the UK in the midst of Brexit uncertainty can provide peace of mind at relatively low costs for businesses active in the UK market.