The Brexit has been announced for the end of March 2019. This term refers to the United Kingdom’s exit from the European Union, voted in following the referendum held among Her Majesty’s subjects. It would be logical for this UK exit from the EU to impact patents, trademarks and designs, particularly those filed at European level, which may simply no longer cover the UK. And what about those already filed or registered?
To protect your invention in the UK
Consult your IP advisor
Brexit puts industrial property protection on the negotiating table
No doubt the Brexit will directly influence the protection of industrial property. As far as patents, trademarks and designs are concerned, there will certainly be changes to come. In fact, the European patent system, as well as the “Community” trademark system, are only possible thanks to facilitated negotiations within the framework of theEuropean Union.
Brexit and patenting
The European patent enables you to protect your invention in all 28 member states of the European Patent Convention.
The European Patent Office (EPO) remains the institution of reference for European patent formalities. It is at the EPO that you can apply for a European patent, or even file an opposition to a European patent.
Today, there is no guarantee that the UK will remain a member of the European Patent Convention, which enables it to benefit from a common patent procedure with the other member states. It is quite conceivable that the protection of one’s invention would then have to be achieved by filing directly in the UK, or by entering the phase in the UK of an international PCT application, as one would do to protect one’s invention in the USA, for example.
Inventions in the field of biology and life sciences could be directly impacted by the Brexit. Indeed, the arrangements for protecting pharmaceutical products and plant health products could also be impacted, particularly as regards supplementary protection certificates.
Brexit and designs
A design protects the aesthetic or ornamental aspect of an object. Examples include fashion items, product packaging and products that have been designed.
When distributing a product on the European market, Community Design Protection (CDP) for the whole of the European Union is relevant. A procedure must then be carried out with the European Union Intellectual Property Office(EUIPO). This allows the design to be registered in Europe prior to marketing. After Brexit, Community Designs (CDs) that are registered may no longer protect you in the UK, and will require a UK national registration in addition.
The date of disclosure of your design in and outside the UK needs to be estimated accordingly. Indeed, UK law is very different from European law in this respect, and without proper advice, you risk not being able to benefit from the protection you were aiming for.
Brexit and trademark protection
If you already own a Community Design (CD) or Community Trademark (CTM) registered in the European Union, and therefore also in the UK, this protection will still be valid after Brexit. Indeed, agreements already in place allow trademarks and CDMs protected under the so-called “Community” protection to benefit from an automatic equivalent in the new UK system. This is known as the conversion of European trademarks and Community Designs. For this to happen, the trademark must be used in the UK. If this is not the case, do it quickly, to avoid the UK trademark lapsing for non-use!
For any post-Brexit trademark registration, you’ll need to study whether or not a deal has been reached with the European Union and whether it’s then necessary to carry out a separate trademark registration process with the UK too, if that country is affected by your needs.
