Intellectual Property

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  • What overall impact do you expect on your current European IP portfolio strategy? Although the outcome of the negotiations surrounding Brexit over the next few years is uncertain, IP portfolio strategy should be reviewed to ensure that the scope of existing IP rights will be protected, and contingency plans should be put in place to address any potential gaps in EU and U.K. protections after Brexit. This is an issue that is particularly relevant to companies that rely heavily on EU trademarks and registered designs in the U.K., since those rights are potentially at risk post-Brexit and separate, but parallel, protection may need to be pursued.
  • What European IP strategy changes do you expect to implement to hedge against the U.K. adopting the Norwegian model? And what if it, instead, adopts the WTO model? Other models? If the U.K. adopts the Norwegian model, the U.K. will remain closely tied to the EU and would have full access to the single market once it becomes a party to the European Economic Area agreement and the European Free Trade Association. Under this model, the U.K. will make smaller contributions to the EU, will not have the right to contribute to the rulemaking process and will be subject to some EU rules; it will, however, be exempt from EU rules on home affairs. On the other hand, if the U.K. adopts the WTO model (or fails to reach a deal with the EU or its member nations before Brexit takes effect), the U.K. will be essentially disconnected from the EU, with no free movement of trade or services without entering into separate agreements. Other intermediate models, such as the Swiss, Turkish, Canadian or Singapore/Hong Kong models, could be adopted with varying effects as well. Companies that do business in the U.K. should consider alternative IP strategies well in advance of Brexit to ensure that quick and efficient actions will be taken regardless of which model is adopted by the U.K. upon exit.
  • Do you expect changes to your IP strategy relating to the goods and services that flow between your U.K. businesses and other European businesses, as the Digital Single Market initiatives, once adopted, are now unlikely to apply in the U.K.? The Single Digital Market strategy adopted by the EU and its associated initiatives are focused on achieving efficient and universal access to digital goods and services across the EU. Goals include implementation of common e-commerce rules and standards and the removal of current national barriers to efficient e-commerce across borders. Companies that are involved in e-commence within the U.K. and EU markets must plan, from both infrastructure and financial standpoints, to address or overcome any potential barriers that may exist.
  • Does your IP strategy count on ratification of the Unitary Patent system? The future of the Unitary Patent system is now uncertain, given that the agreement in its current form requires the U.K. to ratify it. If your strategy counted on its ratification in 2017, this is unlikely to occur, although it may still occur at a future date, depending on the Brexit negotiations and/or the possibility that the agreement will be amended by the remaining member states to exclude the requirement that the U.K. ratify it. While Brexit will not affect the U.K.’s ability to file a European Patent designating the U.K., the lack of the Unitary Patent and Unitary Patent Court or the lack of ability to participate if implemented may be disadvantageous from a strategy or cost perspective. Companies that counted on its creation and participation must now adjust their strategies. For example, in the life sciences sector, this may impact U.K. companies’ patent strategies and associated regulatory burdens.
  • To what extent does your business currently rely on EU Community Trademark and/or registered or unregistered community design rights to protect your businesses in the U.K.? Many companies have made the choice, or have a strategy, to apply for EU trademarks and registered community designs and/or to rely on the rights afforded unregistered community designs to protect their trademarks across the EU, including the U.K. While it is possible that Brexit negotiations will lead to grandfathering of the rights already obtained, companies may want to put precautionary plans in place in the event that supplemental U.K. protection for key trademarks needs to be pursued and to consider that future strategies may involve seeking protection in both the EU and the U.K.
  • How might your European IP litigation strategy be affected? After Brexit, enforceability within the EU of U.K. judgments including the imposition of injunctive relief (and vice-versa) will depend on which model is adopted by the U.K. and the corresponding agreements that are put in place prior to Brexit. Therefore, companies should consider preparing a contingency plan in case proceedings have to be brought in both courts if the associated actions involve both the EU and U.K. territories. Companies must also consider the potential impact of separate EU and U.K. unfair competition challenges or investigations. All of these factors will need to be taken into account when restructuring IP litigation strategies and budgets.
  • Are you currently relying on prior EU case law or injunctions imposed in jurisdictions outside the U.K. to protect your rights in the U.K? In the post-Brexit period, different interpretations of U.K. law and EU law may occur in U.K. courts, since they will no longer be bound by EU law or interpretations—this may cause a significant departure in the ground rules that apply to IP.
  • Do your U.K. businesses rely on IP contracts and licenses executed outside of, and/or subject to, the laws of another European jurisdiction? Companies should review both their incoming and outgoing IP-related agreements that relate to EU IP rights to determine whether it may be necessary to invoke successor provisions, execute amendments, or negotiate and execute entirely new agreements to cover IP rights in the U.K. These considerations are likely to be most applicable to agreements that include trademark rights. In addition, differing interpretations of U.K. and EU law may dictate changes in practice and may necessitate modifications to existing agreements.

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Steven M. Zager
+1 212.872.1037
New York

Peter A. Emmi
+1 212.872.1038
New York

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