Asia IP

The European Union was considered a success in its efforts towards regional integration and harmonization, but the recent Brexit has proved otherwise.

“With the Brexit, there are political as well as legal implications. The member countries of the EU had successfully established the Office for Harmonization in Internal Market by virtue of which a party could apply for trademark and design registration in all the member countries through one application,” says Mohan Dewan, a principal at RK Dewan & Co in Mumbai. “However, now that the UK is no longer a member of the EU, it will imply that the community registration of trademark and design will no longer be valid for claiming protection in the UK. The proprietors of such marks and designs will have to file separate applications in the UK. The extra applications will naturally have cost implications on the applicants, making the process a little more expensive than earlier.”

Furthermore, says Dewan, the injunction orders passed by the UK courts in the event of infringement will no longer have a pan-EU effect. “[They] will only provide protection in the territory of the UK. Trademark and design applicants must therefore carefully assess the situation and accordingly apply for separate applications with the IP Office in the UK. Moreover, it will be necessary to show ‘use’ of trademarks in both the UK and EU in order to avoid revocation.”

The implications are less for patent applications since the European Patent Office was formed as a result of the European Patent Convention, which is not a result of EU membership. However, there may be a delay in the implementation of Unified Patent Court, which will be a common court for examination of patent applications among EU members, he says.

The Protocol on the Provisional Application of the Agreement on the Unified Patent Court (UPC) has not yet come into effect; the designated court for the UPC was situated in London, but as an after-effect of Brexit, the court will have to be relocated to a member country. This will require the approval and ratification of other member countries, thereby delaying the implementation of the UPC. If an entity or person has to file a patent infringement action against an infringing entity in the EU, separate suits will have to be filed in both the UK and EU, thereby increasing expenses, says Dewan.

In the light of the Brexit, it is necessary to note that there will be a transition phase of almost two years for implementing the changes, Dewan says. “It will also be beneficial if the IP laws in the UK continue to be in line with the EU laws and regulations, thereby providing for uniformity of procedure for the applicants.”