The Impact of Brexit – What We Know Now

On 23rd June 2016 the UK public voted to leave the European Union. Despite the vote to leave the EU, the UK will continue to abide by EU laws until exit is finalized.

Before the process of leaving the EU can be put into motion, the UK will need to invoke Article 50 of the Lisbon Treaty, which has yet to occur. Once Article 50 is invoked, it is expected that the terms of exit will take around 2 years to establish. This 2 year period is set in the Lisbon Treaty but can be extended with the agreement of the 27 remaining EU member countries.

During these next few months it will become clearer how the impact of leaving the EU will affect European intellectual property rights. Of particular significance will be whether the UK decides to join other trade agreements such as the European Free Trade Agreement, or be a part of the European Economic Area.

Below is a summary of the changes we can expect:

  • Until withdrawal from the EU is completed, all European rights will continue to have effect in the UK and new trade mark applications can be filed as normal. Whilst the terms of exit are negotiated we recommend that applicants consider parallel applications in the EU and the UK.
  • EU rights will not continue to have any legal effect in the UK once withdrawal from the EU has been completed. However, it is expected that a transitional procedure will be negotiated which will enable EU trade marks to be converted into UK national trade mark registrations without any loss of rights. It is not yet known whether this procedure will be automatic or will require an application to convert rights.
  • Pending negotiation of the terms of exit, we recommend holders of EU trade mark registrations use their marks in both the UK and in other EU member countries to avoid vulnerability to cancellation. Use in the UK is not likely to be considered sufficient use of an EU mark after the UK has left the EU. In addition, in the UK, it is likely that new use periods will be established to allow the holders of former EU rights to make use of their marks in the UK.
  • Once the UK has withdrawn from the EU, applicants requiring protection of trade marks in both the UK and the EU will be required to file two separate applications. Any holder of UK national rights and EU wide trade mark rights will need to make use of the mark in both the UK and the EU to avoid vulnerability to cancellation on the basis of non-use in the respective territories.

We also recommend that the terms of existing agreements and licenses be reviewed. Agreements and licenses where the scope is defined using the EU as a territorial description will be compromised by the UK’s withdrawal from the European Union and will require amendment.

 

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

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