Impact on IP if the United Kingdom Exits the EU (Brexit)

As you may have heard, there is a referendum about a possible withdrawal of the UK from the EU ("Brexit") today, June 23, 2016. You may be asking what this means for European Trademarks (which currently cover the UK), and whether clients owning European trademarks should refile their trademarks in the UK, or start filing new marks in parallel.

• First, a withdrawal of the UK from the EU would not be effective immediately. If a majority of the British voters should support a "Brexit", the UK would have to begin negotiations with the EU about a withdrawal agreement. Unless an agreement is reached earlier, the withdrawal would not become effective before two years after the referendum.
• Second, there most likely would be a transition regime for European trademark law under UK law. We would expect the UK would allow owners of European trademarks to convert the European trademarks to national trademarks in the UK, while keeping the filing dates of (and possible priority dates claimed for) the European trademarks.

At this time, there appears to be no urgent action required. If the referendum should be in favor of a "Brexit," there should be sufficient time for trademarks owners to consider their options.

However, there may be special circumstances. For clients that want to err on the side of caution, it might make sense to file for more important marks currently only covered by European trademarks in the UK, in particular where the UK is an important market, and where there are existing or upcoming trademark conflicts in the UK.

• If the UK decides to leave the EU, the UK trademark office might be flooded with national trademark applications (also from UK applicants, who own European trademarks, too.)
• Even if the UK should allow a conversion of European trademarks to national trademarks, it might take a while until the corresponding rules under UK law come into force, further protracting national protection.
• As a result, where a trademark owner exclusively relies on European trademarks, there might be a temporary gap in protection, which might turn out to be fatal, in particular where there are conflicts pending with the UK courts, or the UK trademark office.

For more information, contact your Fish & Richardson attorney or Jan Zecher, Principal, Munich ([email protected]).