The Ip protection of gaming at the Brexit test
Imagination in the gaming sector has to deal with the next exit of the United Kingdom from the European Union.
Intellectual property is in itself transnational and so protection is and must be, so that it can be effective: a patented gaming machine, a game layout or simply products marked with a certain distinguishing mark can and must be able to circulate in every part in the world, and simultaneously protection must be ensured for all markets in which the product or service is or will be marketed. However, the protection of trademarks, licenses and designs is territorial, that is to say they are valid for the designated country or countries, and therefore in which protection is requested or subsequently extended. For this reason, there are various international treaties that harmonize the related legislations, and international and supranational organizations that allow them to make a request for protection with a wider territorial scope than that of a single state: the main ones as far as we are concerned are Euipo (European intellectual property organization) and Wipo (World intellectual property organization).
The European brand/design and model
Euipo is the European intellectual property office that allows the registration of trademarks and designs valid in all Eu countries: the application is unique and the trademark or design and model registered to the Euipo is equivalent to a registration made simultaneously in all Eu countries. The European trademark is a single title that corresponds to a national trademark in each of the Eu member states. Furthermore, the registration procedure, in addition to any judgment on the trademark/design or model, is unique and is carried out to the Euipo and possibly to others Eu justice bodies. This means that a European trademark (Mue) as well as a Community model (Dmc) is valid simultaneously in all Member States of the European Union, therefore it is not possible, for example, to imagine a Mue or Dmc with the exclusion of a Member State.
It follows that the exit of the United Kingdom from the Eu has serious impact on the activity of the Euipo and on the validity of the related titles, for this reason the Euipo has for some time provided for dedicating large spaces to the Brexit subject, in order to respond to the questions of the holders of a Mue or Dmc.
Euipo has published on its home page a ‘Brexit info Hub’, which contains all the clarification measures taken by the office to clarify any doubts about the consequences on Mue and Dmue following the exit of Great Britain from the EU. From the withdrawal date, in fact, the Eu rules on trademarks, designs and models will no longer apply to the United Kingdom, unless there is a withdrawal agreement that provides for different rules.
Euipo has published a document containing questions and answers to the main questions of those who have or intend to file a European trademark that somehow involves the United Kingdom (Euipo communication 18 January 2018 on the impact of the United Kingdom’s withdrawal from the European Union on the European Union trademark and on the Community design and model and Communication of 22 February 2019 “Additional general guidelines of Euipo for rights holders and representatives’). The most important issues for Mue and Dmc (No deal Brexit) holders are highlighted, unless a withdrawal agreement between the United Kingdom and the Eu follows.
1. Can Uk citizens and companies based in this country hold an European Union trademark?
Yes, any natural or legal person can be proprietor of a Eu trade mark/file a Eu trade mark application, irrespective of its nationality or establishment. Nothing will change in this regard.
2. Are Eu trade marks protected in the UK?
Eu trade marks are protected in the Eu and not in third countries. As from the withdrawal date, Eu trade marks registered prior to that date will cease to be protected in the UK. Likewise, Eu trade marks registered as of the withdrawal date, are not protected in the UK, irrespective of whether they were filed before or after that date.
3. Can the (former) ‘Uk part’ of an Eu trade mark be transformed into a Uu trade mark (application)?
Eu law does not offer any legal basis which would allow for a prospective (that is before the withdrawal date) ‘partial transformation’ of an Eu trade mark into a Uk trade mark (application). Nor does it allow for such transformation to be made retroactively (that is as of the withdrawal date).
4. Is English a language of the Eu Intellectual Property Office?
English is one of the languages of the Eu Intellectual Property Office pursuant to Art.The UK’s withdrawal from the Eu does not affect this rule.
5. Can English be a language of Eu Intellectual Property Office proceedings?
English being both one of the official languages of the Eu as well as one of the languages of the Eu Intellectual Property Office, Eu trade mark applications can be filed in that language, and English can also become language of proceedings before the Eu Intellectual Property Office.
6. Is the situation with respect to Community design different from that of Eu Trade Marks?
In principle not. The foregoing answers given with regard to Eu Trade Marks apply mutadis mutandis to the Community Design Regulation.
The international brand/design and model
Ompi (Wipo – World intellectual property organization) is the global organization for intellectual property that allows the registration of trademarks and designs in all countries joining the international treaties: the application is unique and allows obtaining a registration valid for each of the member states requested within or after the application, and for which the relative registration fees have been paid. Compared to European trademarks or designs, international trademarks or designs are not unique, but for each application the owner will have to face a registration process in each of the countries for which protection is sought. Therefore, the holder of a right at the end of the procedure will not only own one title (trademark or international design and model), but a bundle of titles (e.g. international trademark + Uk trademark + Us trademark… depending on the Countries requested at the time of application or subsequently and which have granted registration). This means that it is quite possible that against an application made for example for 5 countries, the trademark or design and model will be granted (registered) only for example in 3 countries.
The Eu also joins the Ompi as a supranational organization, so it is possible to extend an international application for a trademark or design and model directly to all Eu member states: Eu states join both individually and as part of the EU, it will therefore be possible for example Tt register a trademark in the individual Eu countries or directly for all Eu countries.
Following Brexit, there will therefore be consequences for international brands/designs and models involving the Eu.
Also this organization has published some official communications regarding the possible consequences of a withdrawal without agreement cd. no deal Brexit (communication 22 March, 2019 ‘United Kingdom: statutory instrument providing for continUed protection in the united kingdom to designations of the european union under the madrid system in case of a no-deal brexit’). The most important issues for owners of an international trademark/design extended to the Eu are highlighted.
For each international trademark/design model for which the Eu is designated before the day of withdrawal, the Ukipo (Uk intellectual property office) will automatically create a new registration at no cost. The new Uk registration will be governed by national laws and will be independent of international registration.
The topic is very rich in unpredictable aspects and developments that I will address in subsequent articles.