The IP Owner’s Guide to Brexit: Don’t Panic

Authored by S. Richard Carden, James M. McCarthy and Eric R. Moran

By now, everyone has likely heard about the United Kingdom’s vote last week to leave the European Union. Few things are certain at this time, as governments around the world are still making plans to deal with Brexit. Further, discussion concerning a potential second referendum on the UK’s participation in the EU, while unlikely to change the vote, has achieved enough momentum to require Parliamentary debate.

Once the UK formally requests withdrawal (which may still be months away), its transition out of the EU will be a lengthy process. As of now, no laws have changed as a result of the UK vote last week. We therefore do not recommend taking any drastic action at this time. We do, however, recommend that any businesses with a presence in the EU begin planning for the changes that will ultimately affect trademark and design rights in Europe.

At the very least, we recommend reviewing your portfolio of EU trademark and design rights with your intellectual property lawyers. When the UK formally leaves the EU, EU trademarks and EU design registrations may no longer cover use of those trademarks and designs in the UK. At that time, separate registrations may be required in the UK.

Based on consultation with our associates, we expect that existing EU registrations will be extended to the UK either by law or through a re-registration procedure before the UK exit. Separation of the UK from the EU, however, should be considered in any clearance searches and applications filed from this date forward.

Finally, a presence in the EU is necessary for the filing of certain international trademark applications that originate within the EU. Such requirements should factor into an evaluation of whether businesses with a UK presence need an EU presence going forward. 

Little will change with respect to the patent process in Europe. The European Patent Convention (“EPC”) is a treaty between nation states, and the European Patent Office is not an EU institution. Thus the Brexit vote has no impact on the UK’s participation in the EPC. The most substantial effect will be on the proposed unitary patent system. At best, there will be delays in launching the system, and indeed the Brexit vote may very well spell the end for the unitary patent.

At MBHB, we will of course continue to monitor the effect of the UK’s withdrawal from the EU on our client’s intellectual property rights. If you have any specific questions about the potential changes to trademark or design laws in the UK or EU, or if you simply want to start the planning process, please contact us. For now though, rest assured that your rights are protected.

S. Richard Carden, MBHB managing partner, is a seasoned trial attorney, with experience in both jury and bench trials in the Federal Court System, as well as in private arbitration. carden@mbhb.com

James M. McCarthy, an MBHB partner, has extensive experience in all areas of intellectual property law. Mr. McCarthy has coordinated complex litigations involving patent, design patent, trademark, trade dress, copyright, trade secret, and unfair competition issues. mccarthy@mbhb.com

Eric R. Moran, an MBHB partner, has experience in all areas of intellectual property law, with particular emphases on litigating and counseling clients on patent, trademark, and domain name issues. moran@mbhb.com

© 2016 McDonnell Boehnen Hulbert & Berghoff LLP

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