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K. Will I still be able to obtain SPCs following Brexit?

Don’t know – SPCs are currently granted under an EU regulation, which will no longer apply after Brexit. Similarly, extensions of the term of SPCs (following paediatric studies) are also granted under an EU regulation. There will need to be new legislation in the UK in order to create rights that are equivalent to SPCs. We will keep you updated on any developments in relation to this point.

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L. Following the referendum result, does my EU Trade Mark registration still protect my trade mark in the UK?

Yes – quite simply, for the time being, nothing has changed; the UK is still a member of the European Union and EU-wide IP rights are still protected under existing rules. The referendum was purely ‘advisory’ in nature and therefore, in itself, the result does not automatically trigger the process by which the UK would leave the EU. It is now up to the Government to give effect to that decision. The exiting Prime Minister, David Cameron, confirmed in his resignation speech that he will not take the necessary steps to start that process and that it will be for his successor to do so. It may be significant that his successor is unlikely to be appointed before September 2016, when the full effects of leaving the EU will be far clearer. If, or when, the exit process formally begins, the ‘exit negotiations’ are likely to last for at least two years, although some commentators believe that they could take far longer. Throughout the exit negotiations and until the UK formally leaves the EU, the protection offered by EU-wide IP rights, including EU Trade Marks, will continue to remain effective in the UK.

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M. What effect will the UK’s formal exit from the EU have upon the scope of protection provided by an EU Trade Mark registration?

IP rights are territorial in scope. Upon the UK’s formal exit from the EU, an EU Trade Mark registration would cease to protect the trade mark in the UK. Furthermore the owner of a UK Trade Mark registration would no longer be able to rely upon that right to oppose the registration of the same mark as an EU Trade Mark.

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N. What EU Trade Mark ‘transitional provisions’ are likely to be considered?

One element of the exit negotiations would concern the manner and extent to which EU Trade Mark registrations could continue to protect trade marks in the UK, without the loss of any rights; the manner in which this could be achieved is mere speculation at this stage, but possible solutions include allowing all EU Trade Mark registrations, granted prior to the UK’s exit from the EU, to continue to have effect in the UK, or, providing for the re-registration of existing EU Trade Marks in the UK.

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O. When should I begin to consider changes to my EU Trade Mark protection strategy?

It is highly unlikely that the Government will formally trigger the exit from the EU before 2017. If and when the exit process is triggered, brand owners should begin to consider revising filing strategies, to ensure that trade marks are protected by both national UK Registrations and EU registrations, regardless of the approach that the UK Government may take in the future. If the UK exits the EU, failing to ensure formal protection for a trade mark in both territories, by way of registrations, could create major obstacles to future trade, even if the brand owner has no immediate plans to trade in both territories. Trade mark owners should be aware that opportunists may file timely applications seeking to secure exclusive rights to a trade mark to which they have no legitimate interest, thus blocking use of that brand by the legitimate owner.

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P. Following the referendum result, do my EU Design Registrations still protect my designs in the UK?

Yes – currently EU Design Registrations continue to protect the designs, subject of the registrations, in the UK. You do not need to make any immediate decisions regarding the separate protection of your present EU designs in the UK.

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Q. How will the UK’s departure from the EU impact upon the scope of protection enjoyed by my EU Design Registrations?

If and when the exit process is triggered, the UK will not formally leave the EU for at least two years. Consequently, your EU design registrations will remain valid and enforceable in the UK until the UK formally leaves the EU. Upon formal exit it is highly likely that transitional provisions will be put in place which should allow all EU Design Registrations filed prior to the UK’s exit from the EU to continue to have effect in the UK. The exact detail of such provisions is currently unclear, but given the requirement that designs must be novel at the date of filing, we believe that measures will seek to ensure that any ‘converted’ UK rights will enjoy the same filing date as the corresponding EU Design registration.

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R. When the UK leaves the EU, will I need to file more than one design application?

Yes – separate UK and EU design applications will need to be filed in order to ensure protection across both territories, if that is what is required.

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S. Do I need to change my patent attorney to someone who is based in the EU to file and prosecute European patents?

No – the European Patent Convention is separate from the European Union and the European Patent Office is not an EU institution. The EPC has always had wider coverage than the EU. Your UK based European patent attorneys will, therefore, continue to be able to represent you before the EPO now and post Brexit. This will not be dependent on the outcome of any renegotiation of the UK’s relationship with Europe.

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T. Do I need to change my trade mark attorney to someone who is based in the European Economic Area (EEA) now in order to file EU Trade Mark applications?

No – the exit process is likely to last at least two years, and UK based attorneys will be able to continue to file and prosecute EU Trade Mark applications in the meantime. It is uncertain how the UK’s relationship with Europe will continue post Brexit, and a consequence of the renegotiation process might mean that Brexit will not have any impact whatsoever on the ability of UK based European Trade Mark attorneys to file and prosecute EU Trade Mark applications. The ability of UK based European Trade Mark attorneys to file EU Trade Mark application post Brexit will not be dependent on the outcome of any renegotiation of the UK’s relationship with Europe .

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