What does Brexit mean for trade mark portfolios, IP contracts and the UPC?
24 June 2016
Services: Intellectual Property
By Sahira Khwaja, Charlie Winckworth and Daniel Brook
The referendum question has finally been answered but a myriad other questions have arisen from the ballot box. In this post we look at three questions affecting trade mark portfolios, IP contracts and the UPC.
What does Brexit mean for your trade mark portfolio?
Many businesses with interests in the UK will have chosen to register EUTMs (once called Community Trade Marks or CTMs) rather than UK national trade marks to protect their key trade mark assets because they provided cost-effective pan-EU protection. What happens to these rights and whether they will continue to apply will depend on the outcome of the UK government’s negotiations with the EU, and the consequent legislative scheme that will take effect on Brexit. Whilst it may be the case that these rights will be grandfathered to take effect in the UK, this will be uncertain for some time to come. Until Brexit actually occurs, the UK remains a member of the EU and so these existing EUTM rights will continue to apply.
So what might businesses need to do? Businesses may wish to review their trade mark portfolios carefully and consider whether they ought to file for supplemental UK protection soon as a back-up to ensure no holes develop in their portfolio. We will continue to monitor developments and advise on the best possible filing and brand protection strategies.
What does Brexit mean for your IP contracts?
We expect that many businesses in the UK will be considering how they will operate in the post-Brexit world. There is no need for immediate concern; however, businesses will need look at their contractual relationships – both existing and future – and in particular their IP licensing arrangements, to determine whether agreements written for a different legal and regulatory environment will still be fit for purpose post-Brexit. Contracts dealing with EU-wide rights, or where the licensed territory is defined as “the EU” will need to be reviewed to ensure that they continue to have their intended effect once the UK has left the EU. LimeGreenIP News wil keep you updated on this, and all other key IP Brexit news.
What does Brexit mean for the UPC?
While Brexit will have no effect on your existing EP portfolio, the future of the UPC, and with it the unitary patent, is now uncertain. The agreement requires the UK to ratify and it is now very unlikely that the UK would do so in the light of its pending exit. Those that remain could certainly seek to amend the agreement to set a different trigger point, and move forward without the UK. That would delay the start date and there may be larger political imperatives. As the UPC’s coverage has never aligned with the EPO, it is an open question whether the loss of the UK (albeit that the UK has a high number of EPO validations) from the system damages its attractiveness to industry. We will continue to monitor developments to see whether there remains sufficient appetite to drive the project through. For now though, a start date in 2017 now looks improbable.
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