The Times, 17th November 2016
Among the many issues that companies need to watch as the UK moves ever closer to a Brexit is what happens to their intellectual property protection.
A company’s intellectual property, its brands and its inventions, can be its most valuable asset. In recent years, businesses have taken advantage of the EU-wide protection for trademarks, and a unified system for protecting inventions across the EU has been under development in various guises since the 1970s.
What will happen to rights acquired under these pan-EU arrangements when the UK leaves the EU remains open to doubt.
The UK’s exit will mean that the EU trademark (by which a brand-owner has protection for its brand in all EU member states through a single registration) will no longer have effect in the UK and brand owners may be left exposed with no protection here. It is widely assumed that there will be some conversion of the UK part of the EU trademark into a UK trademark, but how this will occur is as yet undecided.
This is an area where the UK government is free to act unilaterally and does not need any consent from the EU, and we are told that the government is exploring various options. It is not yet clear whether all EU trademarks will automatically become UK ones, or whether the onus will be on the owners to “opt in”. Whatever route is taken, with over 11 million EU trademarks (all of which apply in the UK), it is easy to see how this is going to be a time-consuming and costly exercise.
On the flip side, owners of EU trademarks who only operate within the UK but have aspirations for wider Europe may find that the EU trademarks they have spent money on are of no use in preventing third parties outside the UK using conflicting brands. A trademark needs to be used where it is registered to be enforceable. Presently, use solely within the UK is enough to maintain protection across the EU. But post-Brexit, use in just the UK will no longer maintain EU protection, leaving a gap that will need to be plugged in some way.
The patent system is not yet harmonised across the EU to the same degree as trademarks. It is unfortunate that just as it looked like a single EU-wide patent right was about to be introduced (the “unitary patent”, planned for 2017), this has been called into question by the UK’s decision to leave the EU. It is unclear whether the system will now go ahead, but unless there is a decision to somehow stay within this EU patent system whilst at the same time breaking ties with the EU (something that may be politically untenable), it is likely that if it does, it will be without the UK. This leaves those seeking to protect inventions once again needing to pursue a number of separate rights rather than a unified one.
As with so many Brexit issues, there is much speculation and discussion and little certainty; businesses and the professional community alike must keep alert to any indication of the government’s plan, and make plans for what action is needed and when to protect themselves in the event that the post-Brexit arrangements leave gaps in the intellectual property protection that firms currently have. Firms that are very dependent on their brand protection and/or the patents covering their inventions should consider how best to ensure that the government is alert to their concerns and to help it negotiate workable solutions.