All posts by Dr Mohan Dewan

About Dr Mohan Dewan

Email: [email protected]
Tel: +91 98230 57535
Dr Mohan Dewan is the principal of R K Dewan &Co, with over 40 years of experience in the field of Intellectual Property Rights.Dr Dewan is a practicing advocate and jurist. He is a registered Patent & Trademark attorney. Dr Dewan has the unique distinction of being an exceptional litigator along with being an expert in patent & trademark prosecution. Having drafted and successfully prosecuted several thousand patent specifications, he has come to be acknowledged as a specialist in patent specification drafting. Dr Dewan has obtained over 5000 patents for various Indian and foreign clients in almost every sphere of technology. His firm represents over 4000 clients worldwide.

Implications of Brexit and IP laws

The formation of the European Union (EU) as an integrated regional bloc was considered as a major success towards regional integration and harmonization; however, the recent Brexit has proved otherwise. With the Brexit there are political as well as legal implications. The member countries of the EU had successfully established the Office for Harmonization in Internal Market (OHIM) by virtue of which a party could apply for Trade Mark and Design registration in all the member countries through one application however, with the possibility of U.K. no longer being a member of the EU it will imply that the community registration of trade mark and design might not be valid for claiming protection in U.K. The proprietors of such marks and designs will have to file separate applications in U.K for protection. The filing of separate application for registration in U.K. and the E.U will naturally have cost implications on the applicants, making the process a little more expensive than earlier. Furthermore, the injunction orders passed by the U.K. courts in the event of infringement may no longer have a pan-EU effect. The Indian trade mark and design applicants will have to carefully assess the situation and accordingly apply for separate application for protection with the Intellectual Property Office in U.K. Furthermore, for trade marks it will be necessary to show ‘use’ of the mark in U.K as well as EU use in either one might lead to application for revocation of registration of a mark in the territory where use cannot be shown.

The implications are less for patent applications since the European Patent Office was formed as a result of the European Patent Convention which is not a result of EU membership. However, there may be a delay in the implementation of Unified Patent Court which will be a common Court for examination of Patent applications in the EU members. The Protocol on the Provisional Application of the Agreement on the Unified Patent Court (UPC) has not yet come into effect; the designated Court for the UPC was situated in London however as an after effect of Brexit the Court will have to be relocated to a member country. This will require the approval and ratification of other member countries thereby delaying the implementation of the UPC. If an Indian entity/person has to file a patent infringement action against an infringing entity in EU, separate suits will have to be filed in U.K. and E.U. thereby considerably increasing expenses.

In the light of the Brexit it is necessary to note that there will be a transition phase of almost 2 years for implementing the changes. It will also be beneficial if the IP laws in U.K. continue to be in line with the EU laws and regulations thereby providing for uniformity of procedure for the applicants.

The Brexit has led to uncertainty therefore; the IP owners should assess the situation and seek maximum protection for their IP rights.