Intellectual property: Brexit plans are a positive sign for rights owners

Uncertainty surrounding Brexit and what form it will take has been felt strongly by all UK businesses, and not least those with intellectual property rights protected at the European Union Intellectual Property Office (EUIPO). However, recent statements during a House of Commons debate and in the Government’s Brexit White Paper have gone some way towards assuaging their fears.

While these recent developments bode well for rights owners, as Britain’s negotiations with the EU enter a critical phase, further clarifications will be needed to ensure that there is a smooth and problem-free transition.

In a House of Commons debate on July 19, Robin Walker, under secretary of state at the Department for Exiting the European Union, made assurances that any EU trade marks, registered community designs (RCDs) and unregistered designs owned by businesses in the UK will be replaced with new UK trade marks “automatically and for free”, even in the event of a hard Brexit.

For those with trade marks or RCDs registered across the EU, his assurances should bring a sigh of relief. They are further evidence that the Government is intending to make the Brexit transition as easy as possible, with the least amount of disruption.

Despite this, there are still a number of questions which will need to be answered and the Government should aim to do so sooner rather than later. While it seems likely that existing trade mark and design rights will be ‘unaffected’ by the UK’s withdrawal from the EU, it is not yet clear what will happen to any pending applications.

Under usual circumstances, once an application is filed at the EUIPO, the rights owner must await registration before being in a position to enforce its registration. However, these rights, once granted, are backdated to the original date of filing. If the EU registration is still pending when Britain exits the EU however, the outlook is less certain. Rights owners and IP professionals have been hoping that there will be a nine-month extended period during which to refile their applications in the UK, claiming the filing date of the original EU trade mark application.

The closer we move to the March 29 deadline without any definitive statements on this matter the more concerned rights owners are becoming. If all pending EU applications are scrapped, which is a possibility, businesses will be forced to refile their applications with new start dates, which could leave their brand assets and designs unprotected in the UK for a significant chunk of time.

To avoid this worst-case scenario, brand owners with pending applications may need to consider double filing to ensure they do not lose any rights in the UK. While this is obviously a cost that they might be hoping to avoid, as the March deadline nears they should be reviewing their portfolios and preparing to file separately in the UK as necessary.

In addition to reaffirming the Government’s commitment to pursuing ‘cooperation on IP’, the Brexit White Paper, published on July 12, contained some good news for patent owners.  The paper states that the UK “intends to explore staying in the Unified Patent Court and unitary patent system” after Brexit. The UK ratified the proposal in April of this year and if the plans in the white paper are followed through, then UK patent holders can look forward to benefiting from access to a streamlined process for enforcing patents in a single court in the future.

Over the past month there have been many assurances about what the future will look like for UK-based rights owners. It is clear that the Government is working to make the transition as straightforward as possible and some positive steps have been made. However, as we move closer to Brexit, rights owners will still need to monitor the situation closely and be prepared to act to protect their trade marks and designs in the UK if necessary.

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