CLIENT ALERT - IP Implications of the UK withdrawing from the EU

As we are sure you have heard by now, the United Kingdom voted to withdraw from the European Union. As a member state of the EU has never withdrawn from the EU before, the implications of this action, and how this will affect intellectual property rights in the UK, is uncertain. We are monitoring the situation closely with our associates in the UK, and we will advise you of any developments that may affect your intellectual property rights. Because we are advised that it will likely take at least two years for the UK to negotiate the terms of its withdrawal from the European Union, no immediate changes are expected. There are a few issues of which you should be aware, however.

1. For the last 20 years, trademark owners have been allowed to file a single trademark or design application in the European Union and obtain a registration that covers all EU member states. Once the UK ceases to be a member of the EU, these registrations will no longer be valid in the UK. In all likelihood, there will be a specific procedure implemented to allow for re-registration in the UK or conversion of existing EU registrations whereby EU registration holders will be allowed to file in the UK without losing their EU rights of priority.
2. Regarding trademark enforcement, the UK courts will no longer be able to adjudicate disputes relating to EU trademarks or registered designs, and it is unclear what, if any, effect this will have on any existing litigation or disputes. It is possible that courts will suspend any such proceedings that are currently pending until the terms of the transition are determined.
3. We also urge you to review your agreements (such as licenses, marketing agreements, or distribution agreements) that cover the EU as soon as possible. If such agreements define the territory as the “European Union” or something similar, it may be necessary to amend those agreements to specifically include the UK as an additional territory.

In summary, no one is quite sure yet how the withdrawal of the UK from the EU will affect IP rights holders. For the time being, however, there are no imminent deadlines or other actions that must be taken. As soon as we learn of any new developments, we will promptly advise you so that we may take the necessary steps to protect your rights in the UK.   

Please feel free to contact the Olshan attorney with whom you regularly work or any of the attorneys listed below if you would like to discuss this matter.