Dear Sir or Madam,
After the BREXIT referendum ended up in the UK for a withdrawal from the EU, we summarize the currently foreseeable impact on the IP landscape.
The BREXIT referendum itself does not result in a change of legislation. First, the UK government has to formally notify the European Council of the withdrawal from the EU. Then, a two-year period will start in that the UK and the EU will negotiate the particulars of the withdrawal. After expiration of this period, the UK is not an EU member state anymore. An extension of this two-year period is possible.
EU withdrawal scenario
It is open when the UK will issue the notice for withdrawal and, thereby, the two-year period is triggered. Presently, it is expected by the EU that this will happen soon. From the UK it is heard that this notification will probably take place after the resignation of Prime Minister David Cameron in October 2016. Others are of the opinion that the notification shall not be made before 2018.
From today's perspective, this will have the following consequences for the intellectual property rights.
1. European patents (EP), national UK patents
For European patents, in particular the validation of the UK, and national British patents, the upcoming withdrawal from the EU does not have any effect. The legal framework of EP patents is independent from the EU law. Everything remains as it is, also for classic EP patents in the future.
2. European patents with unitary effect (EU patent), Unified Patent Court (UPC)
The launch of the EU patent and the UPC was expected in the first half of 2017. Because of the BREXIT, we expect a delay. Whether the UK will participate in for a transitional period, for example for not putting at risk the operation and the launch, is unknown. It is generally expected and affirmed by the European Patent Office that the EU patent system will start with the other EU member states without British participation. Because of the necessary legislative adjustments, we estimate that the launch will be delayed by about two years but that the meaning and purpose of the new features of the new system will not change.
3. European Union trademarks, IR marks designating EU, Community Designs
Until the expiry of the two-year withdrawal period, everything remains the same. Afterwards, it is not possible to obtain protection by these rights for the territory of the UK. This will require national applications. It is uncertain what happens to the territorial effect of existing EU trademarks or Community Designs. It is conceivable that EU trademarks or Community Designs having a filing date prior to the withdrawal will be accepted by the UK in the future. It is also conceivable that the protection is omitted by the withdrawal date or that at least transitional rules will be created. Here, one has to wait for the political decisions of the EU and the British government. For avoiding gaps in the territory protected by your portfolio, we recommend you to consider whether to file national British trademarks in parallel to existing EU trademarks as a matter of precaution. The same applies to Community Designs.
4. Power to represent before the EUIPO (OHIM)
Currently, British lawyers (Advocate, Barrister, Solicitor) and British nationals who are registered as European Trademark Attorneys or European Design Attorneys, are authorized to practice before the EUIPO as representatives. If, despite the withdrawal from EU, the UK remains member of the European Economic Area (EEA) and, thereby, receives a status being similar to the non-EU-member-states Norway or Iceland, this will not change. In case the UK receives a status being similar to Switzerland (no member of EEA), the British Advocates, Barristers, Solicitors, European Trademark Attorneys and European Design Attorneys are no longer allowed to represent before the EUIPO. Presently, also the withdrawal from EEA seems to be likely. Concerning the power to represent before the EUIPO of German Attorneys as well as German European Trademark Attorneys or European Design Attorneys, no change has to be expected. This power will remain.
5. National British trademarks, IR marks designating the UK
The impact of BREXIT is of little account. Presumably, the British Trademark Law will not be continually adapted in the upcoming next level of the harmonization of European Trademark Laws. In the medium term, the British and the continental European Trademark Laws will go their separate ways.
From IP legal perspective, the BREXIT does not have any direct consequences by now. At the earliest in two years, the first significant changes compared to the current status quo will arise.
We shall keep you informed on the further developments.
On March 23, 2016 important provisions being part of the new Regulation (EU) no 2015/2424 will enter into force. This Regulation leads to the most extensive reform of the trade mark law of the EU since the Community trade mark system has been established.
The essential amendments are summarized below:
1. Name changes
On March 23, the Office for Harmonization in the Internal Market (OHIM) becomes the European Union Intellectual Property Office (EUIPO).
The term "Community trade mark" (CTM) will then be changed into European Union trade mark (EUTM).
2. Some of the official fees will be reduced
The official basic fee for the application of a European Union trade mark will be reduced from € 900 to € 850. According to the new scheme, however, the basic fee will only include the protection of one class of the Nice classification for goods and services, whereas up to now the protection of up to three classes was included. According to the new scheme, an official class fee of € 50 has to be paid for the second class; every subsequent class costs € 150. In the former system, € 150 had to be paid for the fourth and every subsequent class.
In the case of an application of a trade mark including only one class, the applicant saves € 50. The fees for an application including two classes remain unchanged. If protection for three or more classes is desired, the application fees increase by € 150.
The official renewal fees will be significantly reduced and will be equal to the application fees in the future. Class fees have to be paid for the second and every subsequent class also in the case of renewal.
In the old scheme, the renewal fees amount to € 1,350 for up to three classes and € 400 for every subsequent class. The reduction of the renewal fees depends on the number of classes a European Union trade mark is registered for. For example, the applicant will save € 500 (1 class), € 450 (2 classes), € 300 (3 classes), € 550 (4 classes), € 800 (5 classes).
In future, the renewal fees will have to be paid not later than on the day of expiry of the protection. Hitherto they were payable by the end of the last day of the month of expiry.
The official fees for opposition, cancellation, and appeal will be slightly reduced.
3. Search only upon request
The EUIPO will issue a search report on the basis of prior EU trade marks only if such a search report is requested.
4. Waiver of the requirement of graphical representation
From October 1, 2017 the requirement of graphical representation of a EU trade mark will not be in force any more. Presumably, it will become possible to register trade marks of new types (e.g. acoustic, holographic, olfactory trade marks).
5. New: European Union certification mark
On October 1, 2017 European Union certification marks will be introduced for goods and services complying with certain certification requirements (quality seals). The Applicant of a European Union certification mark has to submit regulations governing the rules of use of the certification mark.
6. Supplementation of the list of goods and services
+ + IMPORTANT INFORMATION FOR TRADE MARK PROPRIETORS + +
Pursuant to the jurisdiction of the European Court of Justice and the previous practice of the OHIM, it will now be laid down that the headings of a Nice class in the list of goods and services are only acceptable if they are clear and unambiguous. If the entire heading of a Nice class is included in the list of goods and services, the scope of protection of the trade mark will no longer include all goods or services that belong to the respective Nice class, but only those goods or services that are covered by the literal meaning of the heading of the class.
To give an example: The heading of Nice class no. 15 is "musical instruments". Some goods not being musical instruments in the literal sense, however, also belong to this class, e.g. music stands. Music stands are not covered by a European Union trade mark which is registered only for "musical instruments" in Nice class no. 15.
Hence, a clear and precise designation of the goods and services for which the protection of the trade mark is sought is essential.
According to Art 28 (8) of the Regulation, proprietors of European Union trade marks applied for before June 22, 2012 and registered for the entire heading of a Nice class may submit a declaration that goods or services beyond the literal meaning of that heading shall be included in the list of goods and services provided that these goods or services are included in the alphabetical list according to the Nice classification. Hence, the list of goods and services can be augmented by adding those goods or services that are not within the literal meaning of the headings.
In the example given above, goods such as music stands can be added to the list of goods and services through an appropriate declaration.
The declaration must be filed with the EUIPO no later than September 24, 2016.
If you are a proprietor of a trade mark of that kind, we will be pleased to help you with the evaluation of the status and the elaboration of an appropriate declaration. Please do not hesitate to contact us.
Contact: Jürgen Feldmeier, LL.M., patent attorney (email@example.com)
Since March 1st, 2015: Validation of European patents in Morocco
Validated European patent applications and patents can additionally enjoy the practically same protection in Morocco compared to the other member states of the EPC. If a patent is granted by the European Patent Office, the territorial protection can be extended to Morocco if desired by the applicant.
For a validation in Morocco, a respective request of the applicant is required. Such a request for Morocco is regarded as automatically filed for each filed European or PCT Application from March 1, 2015, however it is only valid if an additional fee of EUR 240 is paid. This fee can be paid at the same time when the usual payment of the designation fee of the EPC member states is due (i.e. within six months after the day on which the publication of the European Search Report has been announced in the European Patent Bulletin, or for PCT applications when entering the European regional phase).
For patent applications which have been filed before March 1st, 2015 as well as for patents granted after this date, a validation for Morocco is not possible.
Norway is a new member of the London Agreement (since January 1st, 2015)
For European patents which have been granted on or after the January 1st, 2015 with effect for Norway and which shall be validated in Norway, the necessity for filing a Norwegian translation of the European patent specification is not required any more, if the patent has been granted in English or an English translation of the whole patent is filed. Legal basis for this new language rule is that Norway joined the London Agreement.
In all cases of the validation in Norway, however, a Norwegian translation of the patent claims has to be filed.
The applicant can however also in future file a translation of the patent specification in Norwegian if no English translation exists.
Status of the Unitary Patent and the Unified Patent Court
The measures for introducing the new European patent system (see circular letter of January 2015), consisting of the Unitary Patent (UP) and the Unified Patent Court (UPC), do proceed substantially.
So far, the regulations have been ratified by 8 countries. The remaining, missing 5 countries for being enacted have announced to finish the ratification in the coming months or at least start the ratification process, including Germany. In the meantime, also Italy has joined the European patent system.
It can now be expected that the new EU-wide patent and court system will come into force in 2017.
At the moment, the following annual fees for unitary patents have been determined (this applies to all countries which have joined the UP system and have ratified the regulations):
|Year||planned fee for |
UP in EURO
|former fee for national patents in the|
4 most frequent designation states of the
classical EU patents (DE, FR, GB, IT) in EURO
|former fee for validated patents |
in all 25 designation states of
classical EU patents in EURO
|2||35||(only FR: 38)||0|
Thus, the annual fees for a UP correspond approximately to the sum which had to be paid for the 4 largest countries, however then allow the maintenance of a lot more countries, namely all UP states. By comparison to the fees for 25 countries which had to be paid for the same protection through nationally validated classical European patents, the annual fees are much lower. The accumulated annual fees for 20 years for a European unitary patent (UP) will then amount to approximately EUR 35.000.
We would be glad to answer any further questions you may have regarding these topics.