By Jeannette Carmadella and Haleigh Amant
In light of Britain’s vote last week to leave the European Union, we can expect intellectual property rights in the UK to undergo changes in the coming years. These changes aren’t imminent, as it will take time for the UK to negotiate the terms of its withdrawal from the EU. The major IP impact will likely occur in the area of trademarks, and owners of European Union Trademarks (EUTMs) (previously known as Community Trademarks or CTMs) will need to be aware of the likely changes.
The UK has been a member of the EUTM System only available to member states. This system allows for one application and registration in the EU which confers protection in all member states. Rest assured that, for now, your EUTM registrations confer the same protections that they have in the past. You will not lose any rights. As the withdrawal process continues, it is likely that arrangements will be made to extend protections for existing EUTM registrations to the UK market. We do not yet have information as to what this process will entail. Going forward, new applications for EUTM registrations will NOT confer rights and protection in Britain. That will be achieved only by filing a national application through the UK Intellectual Property Office. Courts in the UK will no longer be able to adjudicate EU trademark disputes. This could affect current pending disputes, although it is unclear at this time.
It would be wise to review your current licensing and distribution agreements. If the covered territory is defined as the European Union, you should consider amending the agreement so that the territory specifically includes the UK.
The International Trademark Association (INTA) has assembled a Rapid Response Group to advise members on the impact of Brexit. This group is expected to prepare a report which will be published in the INTA Bulletin in the next several weeks. We will keep you posted on this and other Brexit developments as they occur. Please note that, through the International Network of Boutique Law Firms, our UK colleagues are ready to assist with any legal issues arising from Brexit.