On 24 June 2016, the United Kingdom voted to leave the European Union. The United Kingdom and the European Union are now dealing with the aftermath of this momentous decision, raising many questions as to what this means for our clients and the protection of their valuable IP rights both in the United Kingdom and the European Union. The process of leaving the EU is complex and to a great extent unknown—no country had ever left the EU before, although Greenland left the scope of the European Union about 20 years ago. The UK may not be alone however as the same political forces which have welled up and overwhelmed the political establishment in the United Kingdom are present in other European countries so Britain may not be the last European country to break-away from the EU in the near future. Furthermore, there are elections set down in virtually all the big countries of Western Europe over the next 18 months. The political atmosphere can only be described as both febrile and explosive.
The Near Term
The UK will not be leaving the EU until the British PM invokes Article 50 of the Lisbon Treaty. Once this has been done, it triggers a 2 year time limit for the EU and UK to negotiate the UK’s exit terms. However, some commentators have said that the re-organisation is the most complex economic reorganisation since 1945, so it could take 5 or even 10 years for the entire process to work itself out.
Patents and European Patents
Patents which are administrated through the European Patent Office are not affected by the vote of 24 June 2016, and such patents will continue in force, in the United Kingdom or any other territory which is part of the European Patent Convention. Nationals of European Convention (including nationals of the United Kingdom) can continue to act for clients before the EPO without restriction. Membership of the European Union is not relevant regarding such representation. With respect to the Community Patent, that is simply treated as a designated office in a European patent office and is no different from any other country in this respect. Finally in relation to the Unified Patent Court there simply is not enough known at the moment to proffer any manner of meaty information.
Trademarks and Designs
As you may know, a trademark may be protected in the UK by a national UK or EU registration both of which can be obtained directly or via an International Registration under the Madrid Protocol. Ultimately, I anticipate EU registrations for both trademarks and designs will no longer cover the UK. At this stage, no one knows whether existing EU registrations will extend automatically to the UK or whether some kind of validation process will be instigated. It may be wise for brand owners to consider seriously the value of securing rights in the UK now, particularly if they plan to licence those rights in the UK and some or all of the European Union Member States going forward. It will probably be at least two years and probably much longer before the process to be followed becomes clear. In so far as Designs are concerned the Regulation 2015/2424 established the EUIPO in March 2016 and deals with the EUIPO generally and does not distinguish between trademarks and designs.
Copyright Law has been harmonised at the European level in numerous respects – for example, the term of protection, the acts amounting to infringement, performers’ rights and qualifying criteria for protection. EU legislation also regulates important issues such as the liability of internet service providers. The extent to which these will be affected by Brexit negotiations remain to be seen.
EU Legislation empowers IP owners to partner with customs authorities in the EU Member States to seize, detain and ultimately destroy imported goods which infringe their rights. This is a particularly important tool for trademark owners in the fight against counterfeits. If the UK remains part of the EEA, the EU legislation on customs seizure would most likely continue to bind the UK. However, under a WTO model, the UK would be free to reject EU legislation and determine its own border controls. This in conjunction with the possibility of amendment of rules relating to the Exhaustion of Rights could mean that businesses could find it easier to prevent counterfeits from entering the UK, although, at the same time it also increases the costs in maintaining two separate border protection regimes.
If you have any questions or have any comments, please contact John Olsen ([email protected]).