22 Aug 2016


European Union trade marks and community designs



Given the wording of these provisions, following Brexit, by definition EUTM and CD registrations will narrow in geographical scope and no longer have any effect in the UK. In the event that owners of EUTMs or CDs do not have corresponding UK trade mark or design registrations, subject to any bilateral transitional arrangements that might be put in place, Brexit may leave them devoid of any registered rights. However, unregistered rights could remain, such as the Berne Copyright Convention, which would allow UK companies to enforce certain rights across the EU.




A new EUTM Regulation came into effect on 23 March 2016, which brought about various changes, both legally and procedurally, to the EUTM system. The changes proposed in the new regulation have to be adopted by all member states by 2019 and implemented in to their national law. Following the UK's exit from the EU, there will be no obligation for the UK to adopt the new regulation. However, given that the process of EU trade mark reform has been ongoing for a number of years, it is unlikely that the UK would reject the new regulation and not implement the changes into national law. The implementation of the new EUTM Regulation is a matter that will need to be monitored throughout the negotiation stage.

Brexit will probably result in increased costs for the obtaining of registered rights for trade mark and design owners. It is likely that any transitional provisions, converting a EUTM or CD into a national UK right, would carry a fee, as was the case when Ireland left the UK. Also, given the high prospect that EUTMs and CDs will no longer cover the UK, trade mark and design owners will need to apply to register in two territories, the UK and EU, thereby paying two separate fees to enjoy the same protection as they have under the current system. Further, this cost will increase if Scotland were to separate from the UK after Brexit and then not subsequently re-join the EU (as discussed below), as rights holders might need to obtain a Scottish national right, again to obtain the same protection they currently have.

Exhaustion and parallel imports


It is unclear to what extent after Brexit the UK will restrain parallel imports from the EEA. Much will depend on the extent to which the UK signs up after its departure to the principle concerning the free movement of goods.

Unitary Patent and Unified Patent Court





Brexit will have little impact on the legality of the UPC and UP system, as it does not need the UK to be a party in order to operate in the long term. As the UK has not fully ratified the UPC and UP system, the decision to leave the EU may mean that the UK never signs up to the new system.


There will now be a lengthy period of negotiation during which the role of the UK in the UPC and UP system will be uncertain. The UK is currently one of the three countries (along with France and Germany) required to ratify the UPC agreement, therefore during the negotiation period, the UPC and UP system will effectively be in limbo. On the official exit of the UK, it will be replaced by the Netherlands as one of the mandatory signatories of the regime, however again this will not be in the near future.

As with the EUTM and CD system detailed above, patent holders are likely to be impacted by additional costs when the UK leaves the EU, without joining the proposed UP and UPC system. The UK will be an entirely distinct jurisdiction, in which right holders will need to obtain a separate patent registration and therefore pay separate fees.

When the UK leaves the EU, the progression of the UPC and UP system is another area that should be monitored throughout the process of the exit.





Even though these are important considerations, as stated previously, when the UK leaves the EU it will not be instant but rather a lengthy process of negotiation. The Scottish referendum would be after the definite exit of the UK from the EU, therefore it would not be taking place in the near future. However, this is one aspect that needs to be monitored throughout the Brexit process.


As detailed above, there will be a significant impact on UK and EU IP rights and laws. At the moment it is unclear how the rights will be affected and to what extent the scope of current and future rights will be narrowed or altered.

However, there are a number of issues that IP rights holders will need to monitor throughout the negotiating process, as any transitional provisions or decisions on the scope of the protection of rights are likely to have major implications.