Brexit Myths

Insights from Christopher Hamer of the Mathys & Squire Intellectual Property Law Firm in the United Kingdom

By: Ryan Grace

In principle, the United Kingdom is set to leave the European Union on Friday, March 29th, 2019.  Since the Brexit vote, there have been numerous rumors and myths surrounding how patents, trademarks and design rights will be affected.  In many cases, the reality is that nothing will change. Christopher Hamer is the expert advisor to Advent related to intellectual property in the United Kingdom and Europe.   I recently had a chance to interview Mr. Hamer regarding the impact of Brexit on intellectual property in the United Kingdom and any consequential effects to companies in the United States.

European Patents

 Mr. Hamer indicated that the “European Patent System is not affected by Brexit.”  He stated that the “European Patent Convention (EPC) is entirely unrelated to the European Union and is not a European Union institution.”  There are already several other countries who are members of the EPC but who are not members of the EU.   For example, Turkey, Switzerland, Norway, Iceland, Serbia and Albania are all part of the EPC but are not members of the EU.  Given that we are dealing with separate governing bodies, “UK based European Patent Attorneys will still be able to fully act before the EPO after Brexit.”  Mr. Hamer also indicated that “patents will continue to be enforced against infringers in the national courts as before.”

European Trademark Registrations (EUTMs)

Contrary to European Patents, Mr. Hamer stated that “EUTMs will not extend to the United Kingdom after Brexit.”  Even though they will not extend to the United Kingdom, they will automatically be “cloned” to create equivalent rights in the United Kingdom.  For pending EUTM applications, there will be an option to refile in the United Kingdom and retain the same filing date. Mr. Hamer indicated that “there will be costs involved and the new application will go through the examination process in the United Kingdom.”  Stated another way, after Brexit, a separate UK trademark registration will be needed to obtain protection for new marks in the UK.  Mr. Hamer further indicated that “use of the trademark in the UK will no longer be sufficient to keep an EUTM registration.”      

Registered Community Designs (RCDs)   

The Brexit effect on RCDs is very similar to the effect on EUTMs. Mr. Hamer indicated that “after Brexit, new RCDs will no longer extend to the UK.”  Like EUTMs, existing RCDS will no longer extend to the UK, but they will “automatically be ‘cloned’ to create equivalent UK rights.”  After Brexit, a separate UK design registration will be needed to obtain protection for new designs in the UK.    

March 29th, 2019 is approaching quickly, and Brexit has been surrounded by rumors and myths since the Brexit vote.  Even though there is very little substantive change with Brexit, there are some procedural hurdles that companies will need to navigate as they protect their intellectual property in the United Kingdom and in the European Union.  If your company has intellectual property assets in the United Kingdom or the European Union or is planning on protecting intellectual property rights in the jurisdictions in the future, your U.S. counsel should have a strong relationship with their United Kingdom counterparts to seamlessly navigation this historic transition. 

Rebecca Bortolotti