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Consequences for European Union Trademarks, community designs and unitary patent

As in the referendum regarding Britain’s EU membership on June 23, 2016, a slight majority of Great Britain’s population voted for Britain to exit the EU, the question now arises which effect the forthcoming exit of Britain will have on the territorial scope of protection of the European Union trademark, the community design and the unitary patent.

First of all, Great Britain will have to declare its exit according to article 50 of the Treaty on the European Union (TEU). Only after this declaration to the European Council will the 2-year-term for exit negotiations and the termination of an exit agreement commence. This deadline can only be extended when there is an unanimous agreement within the European council and in consultation with Great Britain. In our opinion, this will not happen. A quick exit can be expected.

Great Britain will probably declare its exit to the European Council by the end of 2016. If the exit declaration is in fact executed, it can be assumed from an optimistic point of view, that in the course of the negotiations regarding the exit agreement, a solution with respect to the future territorial scope of application of the mark and the design will be found. There is good evidence that this solution will only apply for those union trademarks and community designs which were pending until the official exit.

1. European Union trademarks

a) European Union trademark applications after Britain’s effective exit

EU trademarks which are applied for after the date of exit of Great Britain will probably enjoy territorial protection in the 27 EU countries, only. A separate application would have to be filed for Great Britain.

b) “Old EU trademarks“

All current EU trademarks are likely to remain into force, however, from the date of exit, the territorial scope of protection may only apply for the remaining 27 EU countries and at the same time of the exit, a “change” into an additional national trademark in Great Britain could balance out the loss of protection. Similar to current EU trademarks, the priority or seniority of the “old” EU trademark could be claimed.

For trademark owners as well as third parties, the date of exit would then be important for determining the territorial scope of protection in collision cases.

2. Community design

Community designs will be handled comparable to EU trademarks.

3. Unitary patent

It should first of all be pointed out that the agreement on a unified patent court has not yet entered into force and that thus, the unitary patent agreement is not yet effective. This agreement will enter into force only when, besides Germany and France as well as a total of 13 participating countries, Great Britain has ratified the agreement. So far, Great Britain has not yet ratified the agreement.

Due to the fact that Great Britain has not yet declared its exit and has not yet officially left the European Union, Great Britain could still ratify the agreement. This is, however, rather unlikely provided that the British government adheres to the voter’s will regarding the referendum. The exit within the next approximately two years can be assumed according to that. It can furthermore be assumed that the community of the remaining 27 EU countries agree on the unitary patent for the 27 union countries, only.

As besides the unitary patent, a classical European patent always can be applied, Great Britain, just as Switzerland, Norway or Turkey, can be designated via the European Patent Agreement.

It is questionable how the agreement on a unified patent court and the unitary patent agreement and the overriding requirement regarding the British ratification will be changed when Britain exits the EU, we do, however, expect that the branch office of the central chamber for chemical and pharmaceutical patents of the unified patent court will be relocated from London to Munich and that the UK cannot be covered by the unitary patent.

The next few months will show which changes are made in this regard. In our opinion, the unitary patent will come – even without the United Kingdom.

July 6, 2016; Vanessa Bockhorni (PA)

© Bockhorni & Brüntjen
Partnerschaft Patentanwälte mbB

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