Lexpert magazine features articles and columns on developments in legal practice management, deals and lawsuits of interest in Canada, the law and business issues of interest to legal professionals and businesses that purchase legal services.
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62 LEXPERT MAGAZINE | MARCH/APRIL 2018 for example, registration may be precluded because of temporal limitations. "e usual requirement is that designs must be regis- tered within a year of their publication, so it could already be too late for some appli- cants," Fuhrer notes. Otherwise, because design registration in Britain depends on novelty, there's an argu- ment that designs already protected by the EUIPO do not meet this requirement. And since, arguably, EUIPO protection lapses following Brexit, regardless of whether a rights holder registers in the UK or not, for- mer EUIPO-covered IP owners may not be able to seek damages for violations that oc- curred in Britain before Brexit. Compounding the uncertainty is the fact that no plan for dealing with these issues has emerged. "Trademark and design pro- tections are creatures of EU legislation, all of which will be le in limbo if the UK sim- ply repeals these laws by withdrawing," says Mark Davis, a partner and trademark agent in Norton Rose Fulbright Canada LLP's Toronto office. "But the prevalent thinking is that the UK will enact legislation that, upon regis- tration in the UK, will convert the unitary EU rights into specific rights in Britain." Still, that may be more complicated than it sounds. For example, trademark regis- tration generally requires applicants to demonstrate that the mark has been used in the jurisdiction. Current EU law deems that using a trademark anywhere in the EU constitutes use across the union. "Follow- ing Brexit, however, what happens to that trademark?" Davis asks. "Does the deemed use in the UK still apply for purposes of UK registration? It's all up in the air." IP owners, it seems, have two options: wait out the negotiations and see what hap- pens, or register now. Fuhrer believes that rights holders with substantial interests at stake should be pro- active. "Any client really concerned about established brands should think about get- ting UK registration as soon as possible," she says. "For new trademarks and designs, simultaneous applications in the EU and the UK are probably the best way to go." Pure contractual issues are also looming. For example, licenses and assignments may make territorial reference to the EU, raising the question as to whether the UK will still be within the scope of the rights granted if and when that nation leaves the union. "Companies will have to review their con- tractual relationships to ensure what the definition of EU [is] with or without the UK," Davis says. e situation for patent owners, on the other hand, is much more clear. e United Kingdom has been a member of the European Patent Organisation since the latter's inception in 1977, and British patents are registered with the Organisa- tion's European Patent Office. e Euro- pean Patent Organisation is independent of the European Union (which was formed in 1993), even though all the EU member states belong to it. So, British patents will remain unaffected and applicable in all of the European Patent Organisation's 38 member states, regardless of Brexit. THE UNITED KINGDOM'S impending departure from the European Union will have significant economic implications for it, say analysts. But it will also have rami- fications for other nations, including for Canadian trademark and industrial design holders who wish to protect and enforce their rights in the UK. "ere will be a lot of chaos, because in many cases we're talking about very valuable rights, including rights that have allowed holders to commercialize their businesses and obtain financing," says Janet Fuhrer, a partner and trademark agent in Ridout & Maybee LLP's Ottawa office. e issues arise because many rights hold- ers have chosen the European Union Intel- lectual Property Office (EUIPO) for filing their trademarks and industrial designs on the basis that their rights will apply to all 28 EU member states. "Some even let their UK registrations lapse," Fuhrer says. But once the United Kingdom leaves the EU — which must happen by March 29, 2019 unless all member states, including the UK, agree to an extension — EUIPO protection will no longer apply in the UK. "So, any client who has real concerns should think about getting UK registration." Registering in the UK is not without obstacles, though. For industrial designs, Trademark and industrial design holders will need to act to protect and enforce their rights in the UK BY JULIUS MELNITZER What Brexit means for rights holders PHOTO: SHUTTERSTOCK | INTELLECTUAL PROPERTY | THE BORDER