Brexit – the uncertainty continues
The AIPPI conference in Milan earlier this month added a last-minute session on Brexit following the UK’s vote to leave the EU. The room was packed for the discussion, but what did the panellists think would be the IP implications of the historical vote?
Perhaps unsurprisingly, the general message from the event was to keep calm and not to panic: the process of the UK’s withdrawal from the EU is likely to take around two years – perhaps more. The UK has yet to officially trigger Article 50 of the Treaty on the European Union, which it must do in order to secede from the Union.
The event panel did, however, highlight a number of key issues for IP rights holders in certain industries. In particular, they noted that Brexit would have implications for the pharmaceutical industry, as supplementary protection certificates (SPCs) are based on EU Regulations and interpreted through CJEU case law. No SPCs would be a very serious issue for the pharma industry, and the panellists predicted that the UK would be under pressure to continue SPC protection post-Brexit.
The panellists also spoke of the uncertainty surrounding the enforcement and recognition of case law post-Brexit, and counselled that litigants consider where and when to bring actions, bearing in mind potential enforceability issues.
All we can do is “hope and speculate”
Of the possible routes to split or convert EU TMs post-Brexit into EU-wide and UK national rights, the panellists suggested that there were at least seven scenarios for how this could be managed. Their only prediction was that the option selected by the UK and EU Intellectual Property Offices would most likely be the most efficient from an administrative point of view and, therefore, would likely result in a cost burden for trademark holders themselves. That being the case, all the panellists agreed that IP owners and practitioners needed to monitor and – when the time comes – budget for developments.
Should brand owners file parallel trademark rights now?
It seems inconceivable that whatever approach is chosen will result in a loss of rights for EU trademark holders, however, the only option for complete security for core rights at this point is to file both EU and UK national rights (although the panellists stressed that this should only be advised for companies that really want to ensure 100% security).
Nonetheless, brand owners should be taking the opportunity to look at their usage of their existing and pending EU TMs. This will also give them the opportunity to prepare for the split of those EU TMs which are currently used in the EU only, but not currently in the UK. Refiling in the UK now would trigger the start of a five-year grace period, which may be important if companies plan to trade in the UK but have not begun to use their marks here before Brexit is complete (See our article on trademarks and the ‘genuine use’ requirement here).
Where should you begin?
Novagraaf is advising trademark holders take the following approach to ensure their rights continue to be protected at both EU and UK level post-Brexit:
- Prioritise registrations: Review your current EU TM (and EU Design) portfolio and prioritise rights for action/protection (e.g. between primary, secondary and tertiary registrations)
- Pull out duplicate rights: Identify those EU rights that overlap with existing UK registrations (as separate protection should already exist)
- Weed out waste: Use the opportunity to identify those rights or classes that are no longer relevant, so as to save cost and streamline the portfolio
- Ringfence core rights: Also use the time to review primary/key rights to ensure that they are up-to-date and adequately protected
- Consider associated effects: For example, implications for existing licensing agreements, injunctions/disputes or anti-counterfeiting strategies (as the UK may no longer be subject to the EU principles on the free movement of goods).