Posted on 7/6/2016 12:42:24 AM By Alexis Payne

The United Kingdom (“UK”) recently voted in a historic measure to withdraw its status as a member state of the European Union (“EU”). This move, popularly coined as “Brexit,” is the first such cessation in EU history and implicates myriad international laws, including intellectual property rights. That being said, the Brexit referendum is advisory and instigates a negotiation period that may last years.

The European Patent System operates outside the EU system and will not be significantly impacted by Brexit. However, many businesses rely on “unitary” EU intellectual property rights via the EU Trade Mark and Registered Community Designs. It’s anticipated that these rights will not apply in the UK once Brexit is legally effectuated. However, until a formal law is enacted to that effect, EU trademarks will be treated as they were before Brexit on a “status quo” basis. Interim procedures may be implemented, such as allowing for the re-registration of implicated trademark applications in the UK or for the conversion of pre-existing EU registrations to be filed in the UK without losing associated EU priority rights.

As for active trademark prosecution matters, Brexit will remove UK courts’ jurisdiction for the adjudication of trademark disputes, subject to the enaction period. And the resulting implications thereof could affect existing litigation. It’s possible, however, that courts will suspend implicated proceedings until the Brexit transition terms are finalized.

What to Do Now to Protect UK Trademark Rights?

In light of the uncertain legal terrain of UK trademark after Brexit, we recommend trademark owners review their current UK-related applications, registrations, and attendant agreements (e.g., licensing and marketing agreements). As a conservative measure, if trademark registrations are used only in the UK or are used in the UK as well as other EU member states, trademark owners may want to consider filing separate UK trademark applications if they haven’t already done so. And agreements that address the international use of UK trademark registrations may require amendments to expressly include the UK as an additional territory.

We are monitoring the Brexit development and its implications on intellectual property rights and will provide updates. Please contact us if you have any questions or issues relating to the implications of Brexit on your intellectual property rights.