By Désirée Fields (London) and Ulrike Grübler (Hamburg)

Although some time has passed since the UK’s vote to leave the EU, the full implications of Brexit for trademarks and designs remain unclear. Statements made by EU and UK officials have not changed that position, nor did Theresa May’s Brexit speech in January 2017 provide any indication what path the UK may take with respect to EU trademarks and Community designs. The UK Government’s White Paper entitled “United Kingdom’s exit from and new partnership with the European Union” published on 2 February 2017 is equally silent on this issue. It is hoped that more clarity will be gained in the months after UK government triggers Article 50 on 29 March 2017.

The factual and legal situation remains therefore unchanged and can be summarized as follows:

  • The outcome of the referendum has no immediate consequences on EU trademarks and Community designs as the vote itself does not affect the legal position of the UK as an EU member state.
  • EU trademarks as well as Community designs therefore continue to provide the same scope of protection to rights holders in the UK.
  • It also remains possible to apply for new EU trademarks and registered Community designs which extend protection to the UK and there will be no changes for legal proceedings involving EU trademarks and Community designs initially.

There is no doubt that the status of EU trademarks and Community designs will be among the topics covered during the exit negotiations once these begin. As for many other areas, much will depend on the outcome of those negotiations. However, based on current EU legislation, EU trademarks and Community designs would no longer cover the territory of the UK once the UK leaves the EU.

Further considerations 

The effect of Brexit on legal proceedings involving EU trademarks and Community designs will also need to be clarified during the exit negotiations. Whereas judgments in legal proceedings post Brexit involving EU trademarks and Community designs will no longer be binding on the UK, it will be interesting to see how the scope of protection of already binding judgments with EU-wide applicability is assessed with respect to the UK after the exit.

Actions  

  • No immediate consequences for EU trademarks and Community designs as the scope of protection of these rights remains unaffected for the time being.
  • Continue to follow Brexit discussions to learn about a potential conversion process for existing EU trademarks or registered Community designs.
  • Rights holders with a particular interest in the UK may want to consider national UK applications for trademarks and designs, in particular for their core brands, to avoid uncertainties in upcoming exit negotiations.
  • Be specific about what is meant by referring to “the EU” when entering into licensing or settlement agreements, by clarifying whether the UK is to be included.

We will continue to monitor developments closely and will provide timely updates as soon as the legislative position is addressed by the UK and EU authorities. Please speak to your DLA Piper colleague for more information and visit our Re:marks blog