A narrow majority of 51.9% voted to leave the European Union in the UK European Union membership Referendum.
At present, uncertainty exists about the specific leave scenarios, in particular, whether the UK might become an EEA or EFTA member. It seems quite clear, however, that after a formal exit the United Kingdom will no longer be covered by recent Community-wide rights such as the European Union trade mark or the Registered Community Design.
Companies that intend to continue to claim protection for their marks and designs in the UK should take precautions in due time and adjust their strategies accordingly. In addition, non-EU rights owners who have so far used UK representatives must find new EU based representatives in order to file for new applications.
1. European Union trade mark
It is likely that, similar to the division or the creation of new nation states such as Russia, Ukraine, Kazakhstan or Kosovo, there will be transitional periods in the Madrid System (IR mark), during which trade mark holders will be able to convert their European Union trade mark in the UK into a national trade mark while maintaining the priority of the original European Union trade mark. It remains to be seen exactly how the British Intellectual Property Office will implement this scheme.
It can be expected, however, that from the date of the formal withdrawal, European Union trade mark applications will no longer include the UK. In view of this situation, it continues to be an option to obtain European trade mark protection via an IR mark, thus on the basis of an earlier national application. As part of the IR application, the UK may also be named in addition to the European Union without having to include a national representative, in contrast to the case of a transformation into a national right.
Brexit also concerns the enforcement of rights:
In particular, Community wide injunctions or orders will no longer include the UK. Rather, the holder of an EU trade mark will have to initiate two proceedings, in order to cover the entire European Union, including the UK. To maintain existing Community injunctions, another proceeding must also be initiated to prevent trade mark infringement in the UK following the leave.
Moreover, an EU trade mark that has been used in the UK alone, would in the future possibly be subject to revocation, unless there has been genuine use in the rest of the EU during the relevant period.
Also, EU-wide border seizure applications are no longer effective in the UK after the leave; possibly, a national application will have to be filed.
Finally, existing or future licensing or coexistence agreements on European Union trade marks or concerning the territory of the EU need to be examined and adjusted, where necessary.
2. Registered Community designs
The same applies to Community designs. After the leave, transformation into a national registered design or re-registration of a design in the UK will likely be required.
Similarly, unregistered Community designs will only offer protection for the remaining territory of the EU after the leave, as long as it has been published in the EU. Unless national UK legislation adopts appropriate new provisions, designers would lose corresponding unregistered design rights within the UK.
As regards easier and usually more cost-effective transformation options, we recommend to file international registrations via WIPO for trade marks that are supposed to cover protection in the EU and the UK in the future.
As far as future applications or registrations of European-wide designs are concerned, this way will regrettably not be possible because the UK is not yet a member of The Hague Agreement. Therefore, a design for the UK must be registered nationally in addition to a Community design in the future, in order to obtain appropriate territorial protection.
Licensing and coexistence agreements on European Union trade marks or designs or concerning the territory of the EU need to be analyzed and supplemented by additional contractual provisions, where necessary.