Brexit Negotiations and IP

Florence, Italy

Brexit – The EU Commission and the UK take up their negotiation positions:

A speech by UK Prime Minister, Theresa May, billed as an important moment in the Brexit negotiation process is to take place in Florence, Italy, this Friday, September 22nd 2017. Theresa May will speak in the historic Italian city “to update on Brexit negotiations so far”, according to the prime minister’s spokesman. “She will underline the government’s wish for a deep and special partnership with the European Union once the UK leaves the EU,” he said.

What is the European position on Intellectual Property rights after Brexit?

Earlier this month, the EU Commission has published its proposals in a position paper on intellectual property (IP) rights that it has set out as part of ongoing negotiations with the UK over the terms of the UK’s exit from the EU. The full text can be found here: https://ec.europa.eu/commission/sites/beta-political/files/position-paper-intellectual-property-rights_en.pdf

Unitary rights – granted and pending at the time when the UK leaves the EU:

The EU Commission acknowledges in its position paper that the exiting of the UK from the EU is creating uncertainty for IP rights in the UK after Brexit. The EU Commission has set out in its position paper that intellectual property rights which are unitary in nature, such as EU trade marks and the registered EU designs, should not be eroded by Brexit. The Commission’s proposals aim to ensure that pre-existing unitary rights remain protected in the UK after Brexit. Furthermore, there is also a proposal that applications for such unitary forms of protection that are pending at the time when the UK leaves the EU, will also be equally protected after Brexit. This is to be achieved by transition period rules for existing and pending unitary rights.

What does the EU negotiation proposal say?

The EU Commission’s negotiation proposal focuses on a number of areas of Intellectual Property which the Commission wishes to negotiate with the UK to ensure that agreement is reached between the UK and the member states that remain part of the EU after Brexit (so-called EU27).

For practitioners, the most important aspects of the EU Commission’s proposals are:

  • intellectual property rights with unitary character within the EU, such as registered European trade marks (EUTMs) and registered Community design rights (RCDs), should continue to cover the UK and, of course, be enforceable in the UK after Brexit. This, the proposal suggests, should happen automatically and at no cost, with a minimum of administrative burden to rights holders, even if this would require the introduction of new UK laws. Thus, the Commission proposes that existing rights in the UK derived from unitary forms of protection should continue to remain in place in the UK after Brexit;
  • procedural rights connected to unitary rights (such as priority rights and rights of seniority), which are still pending at the date that the UK leaves the EU, should not be lost after Brexit. This proposal aims to safeguard any applications pending when Brexit occurs;
  • unregistered Community design rights should continue to extend to the UK after Brexit, even though the UK has its own national laws that provide for national unregistered design rights;
  • protected geographical indications (PGIs), protected designations of origin (PDOs) and other protected terms in relation to agricultural products protected under EU law should be granted continued and comparable protection under new laws to be introduced in the UK after Brexit; and
  • intellectual property rights which were exhausted in the EU prior to Brexit should remain exhausted in the EU27 member states as well as in the UK.

What about Supplementary Protection Certificates (SPC’s) and Paediatric Extensions of SPC’s?

  • Patentees are likely to welcome the EU Commission’s proposals on how applications for Supplementary Protection Certificates (SPCs) in the UK submitted prior to, but not processed until after, Brexit, ought to be handled by the UK Intellectual Property Office (UKIPO).

The proposals, outlined by the European Commission, would provide continuity to existing arrangements, assuming, of course, that the proposals are accepted by the UK Government. The EU Commission said: “After the withdrawal date, a person should continue to be entitled to obtain in the United Kingdom, a supplementary protection certificate or an extension of the duration of a supplementary protection certificate (paediatric extension of an SPC) where such person had submitted before the withdrawal date, an application for a supplementary protection certificate or an extension of its duration before a United Kingdom authority, in accordance with Union law and the administrative procedure for the grant of the certificate concerned or its extension is still on-going on the withdrawal date [ of the UK from the EU].”

“Any certificate so granted or extended should provide for protection equivalent to that provided for by Union law,” the EU Commission has stated in its position paper.

What does the EU Commission position paper NOT say?

The EU Commission’s paper does not address any issues of how IP rights will be enforced after Brexit, nor does it address the Unified Patent Court. It is also notable that the EU position paper does not refer to any provisions for preserving representation rights at the European Trade Mark Office (EUIPO) for UK practitioners after Brexit.

Conclusions:

In general, the EU Commission’s proposals would provide legal certainty for rights owners after Brexit and are welcomed. Under the proposal, owners of registered EU trade marks and designs would not have to re-register their rights as UK national rights but would be guaranteed automatic UK protection. This process would save costs, administrative burden and allow for a smooth transition process. Following the Brexit Referendum vote, some practitioners have advised filing for both national UK trade mark and designs as well as the unitary rights at EUIPO. If the EU Commission’s proposal is agreed with the UK, then this is likely to result in a reversal of this trend since brand and design owners can register their rights with EUIPO before Brexit, with the knowledge that they will be able to benefit from continued equivalent protection in the UK after Brexit.

The details of such an arrangement will have to be carefully negotiated with the UK Government. Concerns about matters such as genuine use of a trade mark, reputation, renewal dates, the effect on pending inter partes proceedings pending at the EUIPO and pending cases relating to such IP rights at the Court of Justice of the European Union (CJEU) are only some of the issues that will have to be negotiated against a background of the UK having voted not to be subject to EU institutions such as the CJEU.

We look forward to hearing the UK Prime Minister’s speech on Friday, September 22nd which will set the tone for the negotiations.

-Marie Walsh, 19th September 2017

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