Dr. Markus Herzog

Community Trademark, Community Design and Unitary Patent – Brexit raises questions over questions

24.06.2016

On June 23, 2016, the British people decided to leave the European Union. This historic decision not only puts the fate of the Unitary Patent System at stake, but also raises questions with respect to the validity of existing Community Trademarks and Designs in Great Britain.

It seems that the European IP authorities did not really develop a “plan B” (“B” for Brexit) for the case that Great Britain would “vote for leave” as the SUN titled in the week before the referendum. But fortunately the vote is not effective as of today. It will take some time before the Brexit will actually become effective. So, there is some time left for finding answers which are acceptable for applicants.

1. Community Trademark and Design

Of course, the owners of Community Trademarks and Design are wondering whether their rights which today are effective in the European Union including Great Britain will remain effective in Great Britain after the actual Brexit.

As Great Britain still is and will continue to be a member state of the European Union for quite some time, no changes are to be expected for the near future. Thus, Community Trademarks and Designs filed after the referendum will be effective for Great Britain as well.

As part of the negotiations between Great Britain and the European Union about the conditions of the actual Brexit, transitional regulations will have to be found for already existing Community Trademarks and Designs.

According to a first option, which would be the simplest and most advantageous option for applicants, the transitional regulations could provide that Community Trademarks and Designs which have been filed up to the day before the actual Brexit date would remain effective also for Great Britain.

As an alternative, these Community Trademarks and Designs could be transformed into national British Trademarks and Designs upon request.

A further consequence could and probably will be that British attorneys are no longer entitled to represent clients with respect to Community Trademarks and Designs.

After the actual Brexit, trademark and design protection for Great Britain may of course be obtained via the national and non-EU international routes.

2. Unitary Patent

According to the Unified Patent Court Agreement, Great Britain is one of the three key countries (those signing states which in 2012 filed the highest numbers of patent applications in the EPO) which have to ratify the UPC Agreement in order to bring the Unitary Patent System on its way. As the UPC Agreement differentiates between signing states and member states of the UPC Agreement and as Great Britain signed the Agreement, it may not simply be replaced by the Netherlands (no. 4 in the filing statistics in 2012).

As Great Britain still is a member state of the European Union, it would in principle be conceivable that Great Britain could ratify the UPC Agreement within the next months. However, this approach would be not only politically, but also practically more than doubtful. Moreover, the British parliament will have to discuss much more important questions than the ratification of an agreement which Great Britain never will be a member state of. Thus, the probability that Great Britain will take this option seems to be negligibly small.

As a consequence, the majority of voices expects additional negotiations about the UPC Agreement to be unavoidable. Such negotiations will take some time and will have to deal with many questions, for example:

  • Where should the Central Chamber for IPC sections A and C be located? Up to now it was intended to locate this Central Chamber in London which does not make sense after the Brexit as Great Britain will no longer be a member of the European Union.
  • Should British attorneys, i.e. non-member state attorneys, be entitled to represent clients before the Unified Patent Court? 

As also the European Union will have to discuss very important questions in the context of the Brexit, we deem it unlikely that the negotiations about the necessary amendments to the UPC Agreement will be concluded soon. As a consequence, it is unfortunately not clear when (or even if ever) the UPC Agreement will enter into force.

Of course, Weickmann & Weickmann will keep you informed about any further developments.

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