IN THE AFTERMATH OF THE BRITISH REFERENDUM, A QUESTION IMMEDIATELY AROSE: WHAT IMPACT WILL BREXIT HAVE ON PAN-EUROPEAN IP RIGHTS, NAMELY EU TRADEMARKS AND COMMUNITY DESIGNS? IN PARTICULAR, LAW PRACTITIONERS AND MARKET PLAYERS ARE INTERESTED NOT ONLY IN THE REGIME WHICH WILL APPLY TO FUTURE EXCLUSIVE RIGHTS, BUT ALSO IN THE DESTINY OF ALREADY EXISTING ONES.
Since such rights have unitary effect and validity in all the Member States of the European Union, of which the United Kingdom would cease to be one, the protection granted by EU trademarks and Community designs would no longer automatically extend to the UK territory unless ad hoc agreements are signed as part of the exit negotiations.
It is not the first time that a situation like this emerges on the international stage. In fact, in recent history it has already happened that a process of political and institutional separation has had repercussions on the substance and exploitation of the intellectual property rights protected in that territory. Each time a (new) jurisdiction has become independent after the dissolution of a previously existing Federation or Union of States, it was felt necessary, in particular, to ensure continuity in the protection of the IP assets already existing in the former Union or Federation.
THE EXAMPLE OF YUGOSLAVIA
In the nineties, the Socialist Federal Republic of Yugoslavia went through a gradual process of dissolution, producing new national States with rather different historical and cultural backgrounds. Each of them introduced specific mechanisms in order to face the transition phase, trying to reproduce in its own territory the extension of the IP rights previously protected at a centralized level.
In particular, Slovenia, Croatia, Macedonia, Bosnia and Herzegovina adopted (with some variations) a revalidation system, whereby the holders of previous rights could file a request for extension before the new national IP Office, thus preserving the priority rights acquired through the original Yugoslav registration. Similarly, Kosovo, where a national system of intellectual property protection autonomous from the Serbian one was introduced, provided a one-year revalidation period (from November 2007 to November 2008), during which it was possible to extend to Kosovo the previous Serbian trademarks, preserving prior rights.
In Montenegro, on the other hand, the scenario was a bit different. In this new jurisdiction it was provided that all the IP rights registered in ex-Yugoslavia before the date of entry into operation of the Montenegrin IP Office automatically remained valid and in force as national trademarks, possibly to be renewed as such. Instead, as regards the trademarks registered after the national IP Office had become operative, it was necessary to revalidate them during a non-extendable revalidation period of one year, from 2010 to 2011.
WHAT HAPPENED IN IRELAND
A few years after its separation from the United Kingdom, in 1927 the Republic of Ireland established an independent IP Office.
For British registered trademarks, the option of re-registration in Ireland was provided, with retroactive effect from the date of the original filing, to be exercised within a 19-month period and upon the payment of a fee. Neither an examination, nor the possibility of opposition was provided for the new Irish filing.
As to existing British patents, protection in Ireland continued automatically until the subsequent renewal fee due. However, after such date a new filing was necessary, with the payment of the relevant fees.
ON THE DISMANTLING OF THE SOVIET UNION
The breaking up of the Soviet Union in 1991 gave rise to a number of new independent jurisdictions, with very different cultural traditions; each of them adopted its own laws and established its own national IP Office.
For example, the Russian Federation established, in the context of a series of laws in the field of intellectual property, that any previous Soviet registration would remain fully valid and in force in its national territory, without the need for revalidation.
THE DIVISION OF CZECHOSLOVAKIA
In 1993 Czechoslovakia divided into two national States, having rather similar historical and cultural traditions. The IP rights already protected in former Czechoslovakia remained valid and enforceable both in the Czech Republic and in the Slovak Republic, with the duty to pay the future fees to the respective IP Offices.
THE EXTENSION OF INTERNATIONAL RIGHTS TO THE EU
The issue also concerns, besides EU trademarks and Community designs, the extension to the European Union which may apply to international trademarks (according to the Madrid System) or international designs (pursuant to the Hague Agreement).
In this regard, in particular, the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement provide for the possible continuation of the effects in a successor State of any international registration already in force in the Country (part of the Madrid System) from which the new State has become independent. This is subject to certain conditions: the successor State must have deposited before the World Intellectual Property Organization (WIPO) a declaration of continuation with the effect of making it part of the Madrid System; moreover, the holder of the registration must file a specific request and pay a fee to the WIPO, within a certain time limit.
In practice, solutions of this kind were applied, for instance, in the context of the Yugoslav and Czechoslovak cases.
THE PARALLEL WITH BREXIT
Past experiences could serve as models to follow within the Brexit negotiations.
Assuming that the automatic extension of European exclusive rights to the United Kingdom is not plausible, except for a limited interim period, the Yugoslav solution for example could be replicated. A certain time limit could be provided, within which the holders of EU exclusive rights could exercise a revalidation option, thereby ensuring the extension of the European IP rights also to the UK territory, without losing the priority acquired through the original filing. This would be particularly significant in order to fulfil the condition for protection consisting of novelty.
However, one case is never just the same as another, and we cannot simply assume that it is possible to establish that EU trademarks / Community designs fully correspond with the national exclusive rights of the various jurisdictions which have split off. In the Brexit case, a supranational legal framework also dealing with intellectual property – the EU one – continues to exist, unlike in several of the past experiences cited above (in particular the Yugoslav, Soviet and Czechoslovak ones), where a whole jurisdiction was dissolved (ex-Yugoslavia, ex-Soviet Union, ex-Czechoslovakia), often in the context of a process of transition towards a different political and economic system (democracy, market economy).
Yet, to a certain extent, a parallel between past and present may be found. In general, now as then, the “happy fate” and preservation of the substance of IP rights which arose before the political and institutional separation may be favoured by businesses having an interest in a transition process which takes place as smoothly and rapidly as possible, so as to gain legal certainty. This could really act as a spur to the making of the technical and legal adjustments necessary to ensure the extension of EU unitary exclusive rights to the post-Brexit United Kingdom.
Giulia Beneduci