Dallas, TX, Jun. 24, 2016 —– The Brexit vote result was announced earlier today, and the UK has voted to leave the European Union (referred to as Brexit). For US entities with an IP portfolio in the EU, this decision may inform your business strategy. In regards to trademarks, we recommend that clients consider filing for UK applications for each mark currently registered in the EU (formerly known as CTM) and/or being used in the UK at this time.
During the transition period (i.e. next two years), the UK will continue to be part of the EU and EU rights will continue to extend to the UK. What happens after the UK leaves the EU is expected to be determined during the transition period.
Munck Wilson Mandala anticipates that EU trademark registrations will no longer extend to the UK, however, it is likely that there will be a procedure for converting EU trademarks into UK national marks. Lobbying is underway for this to be a simple and inexpensive process. But, there remains uncertainty in the process. At this time, no discussions have occurred on what the transitional provisions will be.
Based on the foregoing, MWM recommends that clients with a presence in the UK, or clients who wish to mitigate current uncertainty, consider filing UK applications for their marks currently covered in the EU registrations. The UK is a “first to file” jurisdiction and filing now may prevent issues later. Additionally, if all use of an EU registered trademark is in the UK, companies may want to consider expanding use to countries remaining in the EU to avoid potential cancellation of the registration.
In regards to European patents, the UK’s membership of the European Patent system is independent of membership of the EU. European patent applicants will not lose any rights and patents already obtained via the European Patent Office are unaffected. Likewise the UK's membership of WIPO is independent of membership of the EU. In relation to a possible system of a Unitary EU Patent, which was to be launched in mid-2017 – this is likely to be delayed by at least two years.
Your MWM team is prepared to work with foreign counsel to file any UK applications ASAP. Contact your MWM attorney for further information.
Munck Wilson Mandala is a technology-focused law firm with offices in Dallas and Marshall, Texas, with an emphasis on patent, trade secret, trademark and other intellectual property disputes. The firm offers full-service counsel in the areas of intellectual property litigation, complex commercial litigation, intellectual property portfolio development, corporate transactions and securities, and employment law. Munck Wilson Mandala represents clients from start-ups to Fortune 50 companies. Learn more about the firm at https://www.munckwilson.com.
Shannon Tipton, 972-628-4500