Ever since the United Kingdom voted to leave the European Union three years ago, uncertainty has surrounded what this will mean for travel and commerce in Europe. This uncertainty has also included the treatment of intellectual property rights in the UK and EU. While Brexit was originally scheduled for March 2019, that deadline has been extended to October 31, 2019. If you have IP interests in the UK and EU, this extension provides further time to consider your IP rights and to prepare.
While Brexit will have far-reaching impacts, the UK Intellectual Property Office (UKIPO) and the European Union Intellectual Property Office (EUIPO) have offered guidance as to how these offices will handle intellectual property rights in the event of a “No Deal” Brexit or if intellectual property is not otherwise addressed as part of a broader transition agreement. This guidance, and any other official information provided by the UKIPO, can be found at https://www.gov.uk/government/publications/ip-and-brexit-the-facts. Further, it is likely that the UKIPO guidance will be adopted should there be a transition agreement. Therefore, it is reasonable for intellectual property owners to consider this guidance in their planning.
One point of certainty that intellectual property owners must remember is that patent rights under the current European Patent system will not be affected by Brexit. The European Patent System is governed by way of a separate treaty and exists apart from the European Union. However, should the European Unitary Patent happen to come about, then the United Kingdom’s status within the European Union would have implications for unitary patent rights.
The UKIPO guidance sets forth how the transition of Trade Mark and Design rights in the UK and EU will be handled. Should Brexit come to pass without an intellectual property transition agreement, then as of the exit date, the UKIPO will create a new UK “clone” of any parent European Trade Mark (EUTM) or Registered Community Design (RCD) on the UKIPO registers. This “clone” would be a separate right, subject to renewal in the UK, enforceable in the UK, and which could be licensed and/or assigned independently from the EU right.
However, if an EUTM or RCD right has not yet granted by the exit date, meaning that the EUTM or RCD application is still pending on the exit date, then no clone would be created in the corresponding UKIPO register. In that case, an IP owner would need to file a new application in the UK. The UKIPO guidance has set out a nine-month window from the exit date to file an application in the UK that claims priority to the pending EUTM or RCD. If the UK application is filed within this window, it would be entitled to claim the same filing date as the priority EUTM or RCD application.
EUTM rights not supported by actual use are vulnerable to cancellation actions by others. The cloned UK Trade Mark rights would have a similar requirement. Mark owners should be cautious, as use solely in the UK would no longer meet the use requirement for an EUTM registration, and likewise, use outside of the UK would not support the cloned UKTM registration.
How Should an Intellectual Property Owner Prepare?
In view of the UKIPO Guidance, it is recommended that Intellectual Property Owners:
Andrus Intellectual Property cares about our clients’ brands and innovation. Please contact us with any questions that you may have about your intellectual property rights. We also have an extensive network of skilled practitioners across the UK, Europe, and the world with whom we work to keep your intellectual property secure around the globe.
On June 25, 2019, Attorneys Peter Holsen and Aaron Olejniczak represented Andrus Intellectual Property Law at the topping off ceremony to recognize the last beam of the BMO Tower being lifted into place. Andrus is excited to be one of the tenants in the new building, located at 790 North Water Street in Milwaukee.
Thomas Knight and Aaron Olejniczak co-authored an article published in the Wisconsin Journal of Family Law. The article provided a primer on intellectual property assets and how they may be assigned, licensed, bequeathed, or otherwise transferred. The Wisconsin Journal of Family Law is available online for members of the Family Law Section of the State Bar of Wisconsin.
Click here to read the full article.
Attorneys Joseph D. Kuborn and Aaron T. Olejniczak were selected for inclusion in Managing Intellectual Property's 2019 edition of the IP Stars list. Managing IP’s World IP Survey covers over 80 jurisdictions, and the rankings are based on extensive research among IP practitioners carried out over six months. A team of researchers seeks responses from thousands of firms and clients. IP Stars highlights attorneys with a strong understanding of products and industry areas, as well as the requisite legal experience.
Andrus was once again included in the guide entitled IAM Patent 1000 - The World’s Leading Patent Practitioners. The IAM Patent 1000 is a standalone publication that identifies individual and firm expertise in all major areas of patent law and practice. Through an extensive research process by a team of highly qualified analysts, the publication identifies the top patent practitioners and law firms in 40 of the world’s most important jurisdictions and 20 U.S. states. In addition to firm-wide recognition, Joseph Kuborn, Aaron Olejniczak, Peter Holsen and Benjamin Imhoff were featured individually, based on positive feedback from clients and associates.
Andrus was selected as a ranked law firm in Chambers USA 2019, identifying our firm as one of the best firms in Wisconsin in the field of intellectual property law. In addition to the firm-wide ranking, Attorney Aaron Olejniczak was included in their Spotlight Table for intellectual property litigation, and Attorney Peter Holsen was included as a Recognised Practitioner in intellectual property. Chambers ranks lawyers and law firms based on the research of over 170 full-time editors and researchers at their head office in London. Researchers talk to lawyers and clients, conducting in-depth telephone interviews, and review submission forms provided by law firms.
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