Tuesday, 11 December 2018

Wightman and Others v Secretary of State for Exiting the European Union

Court of Justice of the European Union
Author Cédric Puisney 

Licence Creative Commons Attribution 2.0 Generic






















Case C‑621/18,  Wightman and Others v Secretary of State for Exiting the European Union  [2018] EUECJ C-621/18, ECLI:EU:C:2018:999, EU:C:2018:999

Jane Lambert

On 19 Dec 2017. Andy Wightmqn MSP and a number of other Scottish, Westminster and European parliamentarians applied to the  Outer House of the Court of Session for permission to seek a judicial review of the Advocate General for Scotland's refusal to confirm that the Prime Minister's notice of intention to withdraw from the European Union dated 29 March 2017 could be withdrawn unilaterally. The petition came on before Lord Doherty who refused permission for a full hearing on the ground that the application had no real prospect of success (see Re Wightman and Others' application for Judicial review on the issue of the unilateral revocability of Article 50 of the Treaty on European Union [2018] ScotCS CSOH_8).

The parliamentarians appealed to the Inner House of the Court of Session which allowed the appeal (see Wightman and Others v Advocate General [2018] CSIH 18).  Delivering judgment on behalf of the Court, Lord Carloway, the Lord President, said at paragraph [30]:
"The issue of whether it is legally possible to revoke the notice of withdrawal is, as already stated, one of great importance. On one view, authoritative guidance on whether it is legally possible to do so may have the capacity to influence Members of Parliament in deciding what steps to take in advance of, and at the time of, a debate and vote on the European Union (Withdrawal) Bill. After all, if Parliament is to be regarded as sovereign, the Government’s position on the legality of revoking the notice may not be decisive. Whether such guidance falls within the proper scope of judicial review raises yet another issue. However, that scope is wide and, returning to the cautionary words in EY (supra), the law is always developing and, in certain areas, it can do so quickly and dramatically. The scope of judicial review of Government policy may be one such area, at least where no issue of questioning what is said in Parliament arises."
Their Lordships concluded at [32] that "having regard to all the circumstances, the court is of the view that the Lord Ordinary erred in holding that there is no 'real prospect of success' in this petition, as that phrase has been explained above."

Following their successful appeal, the parliamentarians applied for the following relief:
"a. A preliminary reference to the Court of Justice of the European Union (CJEU) under article 267 of the Treaty on the Functioning of the European Union (TFEU); and for that reference to be sought by way of expedited procedure;
b. On return of that reference from the CJEU, and in the light of the guidance given by that court, for a declarator from this court specifying whether, when and how the notification which was made by letter dated 29 March 2017 from the United Kingdom Prime Minister, the Right Honourable Theresa May MP, to the President of the European Council, Donald Tusk under article 50(2) TEU can unilaterally be revoked by the United Kingdom."
Their application was heard by Lord Boyd of Duncansby in Wightman and others v Secretary of State for Exiting the European Union  [2018] ScotCS CSOH_61. The learned judge dismissed the application on the grounds that the question was hypothetical.

The parliamentarians appealed again to the Inner House which once again allowed their appeal (see Wightman and Others v Secretary of State for Exiting the European Union [2018] ScotCS CSIH_62).  Their Lordships referred the following question to the Court of Justice of the European Union under art 267 of the Treaty on the Functioning of the European Union:
“Where, in accordance with Article 50 of the TEU, a Member State has notified the European Council of its intention to withdraw from the European Union, does EU law permit that notice to be revoked unilaterally by the notifying Member State; and, if so, subject to what conditions and with what effect relative to the Member State remaining within the EU”.
In view of the expected Parliamentary proceedings including a "meaningful vote" on any withdrawal agreement that might be negotiated, the Court of Session invited the CJEU to expedite the proceedings before it pursuant to art 105 of the Rules of Procedure of the Court of Justice.

The Department for Exiting the European Union applied unsuccessfully to the Inner House for permission to appeal against the reference to the Supreme Court.  When its application to the Inner House failed on 8 Nov 2018 the Department applied for permission to appeal to the Supreme Court.  The application was heard by Lady Hale, Lord Reed and Lord Hodge on 20 Nov 2018 and was dismissed with costs (see the Supreme Court's order in Wightman and Others v Secretary of State for Exiting the European Union 20 Nov 2018).

The Court of Justice granted the parliamentarians' request for expedition on 19 Oct 2018 in C‑621/18, Wightman and Others v Secretary for State for Exiting the European Union EU:C:2018:851, ECLI:EU:C:2018:851, [2018] EUECJ C-621/18_CO.  The parliamentarians were opposed not only by Her Majesty's government but also by the Commission and the Council.  HMG argued that the question was inadmissible because it was hypothetical as the government had no intention of revoking its notice. The Commission argued that it was hypothetical for another reason, namely that it would have no binding effect on the parties to the main litigation. On the substantive issue, the Commission and Council argued that the right to revoke notice under art 50 could not be unilateral lest it be used to leverage concessions from the other member states.  In their submission, notice could be withdrawn only with the unanimous consent of the remaining member states.

In his opinion of 4 Dec 2018, Mr Manuel Campos Sánchez-Bordona. Advocate General advised at paragraph [34]:
"According to settled case-law, it is solely for the national court before which the dispute has been brought, and which must assume responsibility for the subsequent judicial decision, to determine in the light of the particular circumstances of the case both the need for a preliminary ruling in order to enable it to deliver judgment and the relevance of the questions which it submits to the Court. Consequently, where the questions submitted concern the interpretation or the validity of a rule of EU law, the Court is in principle bound to give a ruling. It follows that questions concerning EU law enjoy a presumption of relevance."
The CJEU has a right to refuse to hear a case in certain circumstances but, in the Advocate General's view, none of those circumstances applied.  After analysing the Vienna Convention on the Law of Treaties, Art 50 of the Treaty of European Union and British legislation he proposed that the Court of Justice should answer the Inner House's question as follows:
"When a Member State has notified the European Council of its intention to withdraw from the European Union, Article 50 of the Treaty on European Union allows the unilateral revocation of that notification, until such time as the withdrawal agreement is formally concluded, provided that the revocation has been decided upon in accordance with the Member State’s constitutional requirements, is formally notified to the European Council and does not involve an abusive practice."
In its judgment yesterday, the full Court agreed with the Advocate General on admissibility:
"It is not for the Court to call into question the referring court’s assessment of the admissibility of the action in the main proceedings, which falls, in the context of the preliminary ruling proceedings, within the jurisdiction of the national court; nor is it for the Court to determine whether the order for reference was made in accordance with the rules of national law governing the organisation of the courts and legal proceedings (see, to that effect, judgments of 16 June 2015, Gauweiler and Others, C‑62/14, EU:C:2015:400, paragraph 26, and of 7 February 2018, American Express, C‑304/16, EU:C:2018:66, paragraph 34). In the present case, the referring court rejected the pleas of inadmissibility raised before it by the United Kingdom Government concerning the hypothetical or academic nature of the action in the main proceedings. It follows that, in so far as the arguments of the United Kingdom Government and of the Commission are intended to call into question the admissibility of that action, they are irrelevant for the purposes of determining whether the request for a preliminary ruling is admissible (see, to that effect, judgment of 13 March 2007, Unibet, C‑432/05, EU:C:2007:163, paragraph 33)."

It also followed his reasoning on the substantive law: "as the Advocate General pointed out in points 99 to 102 of his Opinion, it follows from the wording of Article 50(2) TEU that a Member State which decides to withdraw is to notify the European Council of its ‘intention’. An intention is, by its nature, neither definitive nor irrevocable."  In its ruling it actually went firther than the Advocate General:
"Article 50 TEU must be interpreted as meaning that, where a Member State has notified the European Council, in accordance with that article, of its intention to withdraw from the European Union, that article allows that Member State — for as long as a withdrawal agreement concluded between that Member State and the European Union has not entered into force or, if no such agreement has been concluded, for as long as the two-year period laid down in Article 50(3) TEU, possibly extended in accordance with that paragraph, has not expired — to revoke that notification unilaterally, in an unequivocal and unconditional manner, by a notice addressed to the European Council in writing, after the Member State concerned has taken the revocation decision in accordance with its constitutional requirements. The purpose of that revocation is to confirm the EU membership of the Member State concerned under terms that are unchanged as regards its status as a Member State, and that revocation brings the withdrawal procedure to an end."
The significant part of that ruling lies in the last sentence that a revocation of notice under art 50 will leave unchanged the United Kingdon's status in the European Union,   In other words, it can remain out of the euro, out of Schengen if it revoked its notice before 29 March 2019.  After that date, art 49 would apply and the terms of our reentry are unlikely to be anything like as generous as the terms of our present membership.

The timing of the judgment has been criticized by some as an interference in our affairs.  It is nothing of the sort.  It delivered an expedited judgment at the specific request of Scotland's highest court which request was upheld by the Supreme Court of the United Kingdom.   Some may see it as inconvenient but it may also provide us with a way out of our constitutional crisis.

Anyone wishing to discuss this article can call me on 020 7404 5252 during office hours or send me a message through my contact form.

Sunday, 9 December 2018

Writing the EU out of our Copyright Law: The Draft Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations














Jane Lambert

In Copyright and Related Rights after Brexit 19 Oct 2018, I discussed some of the changes to our copyright law and related rights as a result of our departure from the European Union. The Department for Business, Energy and Industrial Strategy has prepared in draft The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2018 to provide for some of those changes and the Intellectual Property Office an Explanatory Memorandum to the draft Regulations.

The draft Regulations are divided into five Parts:

  • Part 1 (Reg 1) provides the name by which the Regulations may be cited and that they will come into effect on "exit day";
  • Part 2 (Regs 2 - 25) makes changes to the Copyright Designs and Patents Act 1988 most of which consist of substituting "the United Kingdom" for references to EEA states;
  • Part 3 amends subordinate legislation as follows: 
    • Reg 26 makes amendments to The Duration of Copyright and Rights in Performances Regulations 1995;
    • Reg 27 to The Copyright and Related Rights Regulations 1996;
    • Reg 28 to The Copyright and Rights in Databases Regulations 1997;
    • Reg 29 to The Artist’s Resale Right Regulations 2006;
    • Reg 30 to the Copyright and Rights in Performances (Extended Collective Licensing) Regulations 2014;
    • Reg 31 to the Copyright and Rights in Performances (Licensing of Orphan Works) Regulations 2014;
    • Reg 32 to The Collective Management of Copyright (EU Directive) Regulations 2016;
    • Reg 33 to the Copyright and Performances (Application to Other Countries) Order 2016; and
    • Reg 35 to the Copyright and Related Rights (Marrakesh Treaty etc.) (Amendment) Regulations 2018; while
    • Reg 34 revokes. The Portability of Online Content Services Regulations 2018.
  • Part 4  makes changes to EU regulations that are incorporated into the laws of England and Wales, Scotland and Northern Ireland by s.3 of the European Union (Withdrawal) Act 2018:
    • Reg 36 amends Council Regulation (EU) 2017/1563 on the cross-border exchange between the Union and third countries of accessible format copies of certain works and other subject matter protected by copyright and related rights for the benefit of persons who are blind, visually impaired or otherwise print disabled; and
    • Reg 37 revokes Council Regulation (EU) 2017/1563 on the cross-border exchange between the Union and third countries of accessible format copies of certain works and other subject matter protected by copyright and related rights for the benefit of persons who are blind, visually impaired or otherwise print disabled; and 
  • Part 5 (Reg 38) provides that amendments made by the draft Regulations do not apply to any database in which a database right exists under the Copyright and Rights in Databases Regulations 1997 prior to exit day.
The power under which these draft Regulations would be made is s.8 of the European Union (Withdrawal) Act 2018.

The IPO has stated in paragraph 9 of its Explanatory Memorandum that it will incorporate them into its unofficial consolidation of Parts 1 and II of the Copyright, Designs and Patents Act 1988 as soon as possible after they come into effect.

Anybody wishing to discuss this article or the consequences of Brexit for intellectual property owners may call me on 020 7404 5252 during office hours or send me a message through my contact form.

Friday, 7 December 2018

Brexit Briefing - November 2018

Author O Flammger
Source Wikipedia Palace of Westminster


















Jane Lambert

Negotiators from the United Kingdom and the European Union have agreed the text of a withdrawal agreement in accordance with art 50 (2) of the Treaty on European Union and a political declaration setting out the framework for the future relationship between the EU and the UK. That agreement has been approved by the governments of the member states at a special meeting of the European Council on 25 Nov 2018.

The draft withdrawal agreement provides for an implementation or transition period starting on 29 March 2019 and continuing until at least 31 Dec 2020 during which time the British government will try to negotiate a long-term agreement with the European Union on the lines of the political declaration. During that period, EU law will continue to apply to the UK although it will cease to be a member on 29 March 2019 and will have no representation in the Council or in any of the EU institutions after that date.

The draft agreement will avoid disruption of trade but it will leave the UK as a rule-taker rather a rule-maker during the implementation period. More importantly, it may require the UK to remain in regulatory alignment with the EU even after the end of that period until both sides agree otherwise to ensure an open border with the Republic of Ireland.

This draft is being debated by both Houses of Parliament as I write this briefing and it has already prompted several ministerial resignations.  It is opposed by almost all the opposition parties and by many Conservative MPs on both sides of the Brexit debate.  Though nothing is impossible in present circumstances, most commentators think it unlikely that it will be approved by either House.

The Prime Minister has warned that the alternatives to the draft agreement are an exit from the EU without any implementation period which could be very disruptive to business and the general public or maybe no Brexit at all. In that regard, the Court of Justice of the European Union is hearing a case that has been referred to it by the Court of Session under art 267 of the Treaty on the Functioning of the European Union,  The case has been brought by Andy Wightman and others against the Secretary State for Exiting the European Union on whether the British government can unilaterally withdraw its notice of intention to leave the EU. The Advocate-General has opined that it can on certain specified conditions (see Case 621/18 Wightman and others v Secretary of State for Exiting the European Union EU:C:2018:978, ECLI:EU:C:2018:978, [2018] EUECJ C-621/18_O). The full Court is expected to deliver its decision on Monday 10 Dec 2018.

Whether we leave the EU with an agreement or not, it is clear that Community designs and plant varieties and EU trade marks will be converted into British ones, that we shall have a British system of geographical indications very much like the EU system and a supplemental unregistered design right that will be similar to unregistered Community designs,  Of course, none of that will be necessary if we remain in the EU. If we stay in the EU or even exit on the terms of the draft withdrawal agreement there is an outside chance that the Unified Patent Court and unitary patent will come into being and that we will participate in them.  It is highly unlikely that will happen if we leave without agreement.

The British government ratified the United Patent Cout agreement on 26 April 2018 and the Minister with responsibility for Intellectual Property who deposited the instrument of ratification was Sam Gyimh MP. Mr Gyimak is one of the ministers who was felt obliged to resign over the terms of the draft agreement as did his predecessor in the role Mr Jo Johnson MP.  Both were good ministers and it is sad to see them go.

Even though there are just a few weeks to go before the 29 March 2019 the best advice I can offer my clients is prepare for the worse and hope for the best.  Anyone wishing to discuss this article or Brexit generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page,  I wish all my readers a Merry Christmas and a happy New Year.

Monday, 19 November 2018

The Intellectual Property Provisions of the Draft Withdrawal Agreement

Author Furfur
Licence Creative Commons Attribution-Share Alike 4.0 International























Art 126 of the Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community which was published on 14 Nov 2018 provides for a transition or implementation period to begin no later than 29 March 2018 and continue at least until 31 Dec 2020.  During that period, EU law would continue to apply to and subsist in the UK by virtue of art 127.  That would include the legislation establishing EU trade marks, Community designs and plant breeders' rights, geographical indications, database rights and supplementary protection certificates. 

Preservation of EU Intellectual Property Rights
At the end of the implementation period, all IP rights granted under EU law would lapse pursuant to art 50 (3) of the Treaty on European Union.  Arts 54 to 61 of the draft withdrawal agreement make provision for the preservation of those rights as UK intellectual property rights at the end of the implementation period. The draft withdrawal agreement makes no provision for the Unified Patent Court Agreement which is awaiting German ratification.   However, if Germany ratifies the Unified Patent Court Agreement during the implementation period there would appear to be no reason why that agreement should not come into force during that period,  What would happen after that will depend on the terms of the UK's future relationship with the EU.

Future Relationship
As I said in A Withdrawal Agreement Reading Guide of 15 Nov 2018, bullet points for an agreement on the future relationship appear in the Outline of the Political Declaration setting out the Framework for the Future Relationship between the European Union and the United Kingdom,  The bullet point on intellectual property could not be briefer:
  • "Protection and enforcement of intellectual property rights beyond multilateral treaties to stimulate innovation, creativity and economic activity."
The words "beyond multilateral treaties" are at least compatible with the possibility of continued British participation in the UPC Agreement.

Trade Marks, Registered Designs and Plant Varieties
Art 54 (1) of the draft withdrawal agreement provides for the conversion of EU trade marks, registered Community designs and plant varieties into corresponding British IP rights:
"The holder of any of the following intellectual property rights which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom under the law of the United Kingdom:
(a) the holder of a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services;
(b) the holder of a Community design registered and, where applicable, published following a deferral of publication in accordance with Council Regulation (EC) No 6/2002 shall become the holder of a registered design right in the United Kingdom for the same design;
(c) the holder of a Community plant variety right granted pursuant to Council Regulation (EC)No 2100/94 shall become the holder of a plant variety right in the United Kingdom for the same plant variety."
Art 55 (1) requires the registration of converted trade marks, design registrations and plant varieties to be free of charge.  The Intellectual Property Office and Plant Variety Rights Office will use data supplied by the EU Intellectual Property Office and Community Plant Variety Office pursuant to art 55 (3).  The UK will honour international trade mark and design applications design applications that designate the European Union during the implementation period pursuant to art 56.

Those new converted rights would be revoked, declared invalid or null and void or cancelled automatically pursuant to art 54 (3) if the corresponding EU right were revoked, declared invalid or null and void or cancelled by any administrative or judicial proceedings which was ongoing before the end of the implementation period.  However, the article makes clear that that would not happen if the grounds of revocation, invalidity or cancellation did not apply to the UK.  In particular, art 54 (5) (b) provides that a converted trade mark will not be revoked on grounds of no genuine use in the EU if it has been put to genuine use in the UK even if the corresponding EU trade mark is revoked.

The priority date for a converted trade mark will be the same as for the corresponding EU trade mark (art 54 (5) (a)). The date of filing or priority of a converted registered design or plant variety right shall be the same as for the corresponding Community right (art 54 (6) (b)). Arr 54 (5) (c) entitles the proprietor of a converted trade mark that has acquired a reputation in the EU before the end of the implementation period to sue under s,10 (3) of the Trade Marks Act  1994.   The renewal date for converted trade marks and registered designs in the UK would be the same as for the corresponding EU trade mark or registered Community design in the EU (art 54 (4)).  The term of protection for a converted registered design or plant variety right in the UK shall be at least as long as the remaining period of protection for the corresponding registered Community design or plant variety in the EU (art 54 (6) (a)).

Where an application for an EU trade mark or registered Community design is made but not granted during the implementation period. art 59 (1) entitles the applicant to apply for  UK trade mark or, as the case may be, registered design with the same priority date as the EU trade mark or registered Community design so long as the application is made within 9 months of the end of the implementation period. Art 59 (2) provides a similar right for applicants for Community plant varieties save that the application must be made within 6 months of the end of the implementation period.

Unregistered Community Designs
The UK is required by art 57 to create an unregistered design right equivalent to unregistered Community designs and to protect unregistered Community designs that come into being before the end of the implementation period under that new right.

Database Rights
Art 58 (1) requires the UK to continue to recognize database rights that are acquired before the end of the trnsition period  to the same extent as they are protected in the remaining member states provided that holders of those rights continue to comply with the qualification requirements set out in art 11 of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases (OJ L 77, 27.3.1996, p. 20).  Conversely, British nationals will continue to enjoy database rights that are acquired in the remaining member states before the end of the implementation period.

Supplemental Protection Certificates
Applications to the IPO for supplemental protection certificates in respect of plant protection and medicinal products within the transition period but not yet granted will be treated as though they had been granted during the implementation period (art 60).

Geographical Indications
Art 54 (2) requires the British government to pass legislation to protect in the UK geographical indications, designation of origin or traditional specialities in the same way and to the same extent as they are protected in the EU.  Any such right subsisting in the EU at the end of the implementation period will continue to apply in the UK after the end of that period,  Such right shall cease to apply in the UK if it ceases to apply in the EU.

Further Information
It is stressed that these arrangements shall apply only if the withdrawal agreement comes into force. Should it fail to do so readers should consult the guidance that has been given by the British government in the event of the UK's departure from the EU without a withdrawal agreement (see IP after Brexit - the Government's Guidance  22 Oct 2018 NIPC Law, Patents if there’s no Brexit Deal 3 Oct 2018 NIPC Brexit, Geographical Indications after Brexit 6 Oct 2018 NIPC Branding, EU Trade Marks and Community Designs after Brexit 15 Oct 2018 NIPC Brexit, Copyright and Related Rights after Brexit 19 Oct 2018 NIPC Brexit, and Plant Breeders' Rights after Brexit 21 Oct 2018 NIPC Brexit).

Anyone wishing to discuss this article or IP generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Thursday, 15 November 2018

A Withdrawal Agreement Reading Guide

Jane Lambert





















Art 50 (2) of the Treaty on European Union requires the European Union to negotiate and conclude an agreement with a member state that has given notice of its intention of leaving the EU that sets out the arrangements for its withdrawal, and takes account of the framework for its future relationship with the EU.  The draft agreement that has been negotiated by officials for the British government and European Union is the agreement contemplated by that provision.  It is intended to come into effect at 23:00 on 29 March 2019 and remain in force until 31 Dec 2020.   It is hoped that a new agreement concluded in accordance with the framework for the future relationship between the UK and EU will take its place to govern relations between the UK and the EU on 1 Jan 2021.

The draft withdrawal agreement can be downloaded from the website of the Department for Exiting the European Union at 14 November Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community or from the website of the Taskforce on Article 50 negotiations with the United Kingdom at the Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community, as agreed at negotiators' level on 14 November 2018.  A copy of the political declaration on the future relationship can also be downloaded from the Department for Exiting the EU website.

The draft withdrawal agreement is a hefty document consisting of 585 pages but it is not densely typed. Many of its pages contain just a few lines of text in a fairly large font.  Like most other international agreements it consists of
  • a preamble, 
  • 185 articles in the body of the draft, and 
  • a number of protocols and annexes.

The 185 articles are divided into 6 Parts covering "Common Provisions", "Citizens' Rights", "Separation Provisions", the "Implementation" or "Transition Period", "Financial Provisions" and "Institutional and Final Provisions". Some of those Parts are very long and are further subdivided into Titles and Chapters. There are protocols on Northern Ireland, the sovereign bases in Cyprus and Gibraltar.  The annexes cover "Social Security Coordination", "Provisions of Union law referred to in Article 41(4)", "Time limits for the situations or customs procedures referred to in Article 49 (1)", "List of Networks, Information Systems and Databases referred to in Articles 50, 53, 99 and 100", "Euratom", "List of Administrative Cooperation procedures referred to in Article 98" "List of Acts/Provisions referred to in Article 128(6)", "Rules of Procedure of the Joint Committee and Specialised Committees" and "Rules of Procedure."

To assist readers to find their way around the draft withdrawal agreement, the government has published an Explainer for the agreement on the withdrawal of the United Kingdom of Great Britain and NorthernIreland from the European Union.   Consisting of 56 pages, this "Explainer" is also a pretty heavy document but it is written in non-technical language and greatly facilitates navigation of the draft agreement,

The outline political declaration is much more concise.   It consists of 6½ pages of bullet points divided into 6 Parts covering "Initial Provisions", "Economic Partnership", "Security Partnership", "Institutional Arrangements" and the "Forward Process."

Art 50 (2) requires any draft withdrawal agreement to be approved by the remaining member states acting on a qualified majority and also by the European Parliament.   It will also have to be approved by the British Parliament many members of which and peers have already expressed misgivings.   I am in no position to judge whether this is a good deal or a bad deal for the UK but the alternative is no deal at all and the guidance notes published by the government on How to prepare if the UK leaves the EU with no deal are far from encouraging.

Anyone wishing to discuss this reading guide or Brexit, in general, should call me on +44 (0)20 7404 5252 or send me a message through my contact form.

Friday, 2 November 2018

Brexit Briefing October 2018

Original uploader Jonto
Licence: Creative Commons Attribution-Share Alike 3.0 unported
Source Wikipedia 


























Jane Lambert

The consequences for the United Kingdon of leaving the EU without a withdrawal agreement on 29 March 2019  anticipated by Her Majesty's government are set out in a series of guidance notes linked to How to prepare if the UK leaves the EU with no dealThe first batch was published on 23 Aug 2018 and discussed in my article And if there is no deal .................. 24 Aug 2018. In many areas such as, for example, civil litigation which I covered in Trans-Border Litigation after Brexit there will be additional uncertainty, inconvenience and expense and even the possibility of injustice.

Ministers and negotiators on both sides have said that 95% of a draft withdrawal agreement has been agreed but the question of how to retain an open border between the Republic of Ireland and Northern Ireland remains unresolved.  The problem can best be understood in the Infographic on the EU's 'backstop' proposal which was published on 11 June 2018.  An open border is possible because of
  • Common tariffs and rules of origin apply to non-EU goods 
  • Common VAT and excise area 
  • Common product safety and quality standards (e.g. food, chemicals and consumer goods), and a 
  • Single epidemiological unit with common rules for animal health and welfare.
After the UK leaves the EU there will be divergence in all those areas necessitating checks and inspections of goods travelling across the border, These need not necessarily take place at the border crossing but they have to take place somewhere.  

The Commission's proposal is for Northern Ireland to remain aligned with the Irish Republic and for checks to take place at the British and Irish ports,  That is rejected by the British government and some Northern Irish politicians as tantamount to annexation of the province.  The counterproposal is a common rulebook for the EU and the whole of the UK.  The counterproposal is opposed by many in the UK and has been rejected in terms by the EU. There has not really been much movement on those issues since July and neither side seems to show any sign of blinking.

Over the last few weeks I have been writing about the consequences of Brexit on any basis for:
The government also updated its advice on IP in IP and Brexit; The Facts on 26 Oct 2018.

The measure of legal protection for brands, designs, technology and creativity is a factor to be taken into account by manufacturers and distributors when making investment and location decisions.  A picture is now beginning to emerge as to what that protection will be.  Most would regard a regime consisting entirely of national IP rights as inferior to the current mix of national and EU rights but some may regard it as enough.  Every business must make its own assessment.

Anyone wishing to discuss this article should call me on +44 (0)20 7404 5252 during office hours or sent me a message through my contact form.

Thursday, 1 November 2018

Trans-Border Litigation after Brexit

Jane Lambert














According to Paper 4 (Civil Jurisdiction and Judgments) of the Bar Council's Brexit Papers, "England and Wales is the leading centre for dispute resolution worldwide." The legal sector generated £3.3 billion of revenue in 2015. The authors of that paper observe:
"That fact that England and Wales is such a significant hub for international dispute resolution has important knock-on advantages for the UK as a whole. There is, of course, the fee income and tax revenues which flow from the sector. However, there are other advantages too. Given the widespread acceptance of English law as an effective law for governing commercial relationships, and the choice of the English courts as a corollary of this, UK parties can often negotiate that English law be the law which governs their commercial relationships with international parties and that their disputes will be resolved in the English courts. This gives those UK parties the “home advantage” of being able to use a law and courts with which they are familiar, even though they are trading internationally."
This country's pre-eminence as a centre for dispute resolution results from having reciprocal arrangements with a large number of countries around the world including, in particular, the other EU member states. 

The Bar Council's Brexit paper warns that the pre-eminence of England and Wales will be damaged if appropriate steps are not taken to ensure that the jurisdiction of the English courts and the enforcement of English judgments are protected.  At present, the courts' jurisdiction and the enforcement of their judgments are assured by Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters,  That regulation will cease to apply to the UK when it leaves the European Union except in so far as it may be preserved for an implementation period by the proposed withdrawal agreement or incorporated into English law by s.3 of the European Union (Withdrawal) Act 2018.

A joint paper by the Department for Business, Energy and Industrial Strategy and the Department of Justice which was published on 13 Sept 2018 and entitled Handling civil legal cases that involve EU countries if there’s no Brexit deal state that  in the absence of a deal with the EU, the following rules will cease to apply to the UK in addition to Regulation 1215/2012:
  • The Enforcement Order, Order for Payment and Small Claims Regulations: which establish EU procedures for dealing with, respectively, uncontested debts and claims worth less than EUR5,000
  • The EU/Denmark Agreement: which provides rules to decide where a case would be heard when it raises cross-border issues between Denmark and EU countries, and the recognition and enforcement of civil and commercial judgments between the EU and Denmark, and
  • The Lugano Convention: which is the basis of our civil judicial relationship with Norway, Iceland and Switzerland: This would not prevent us from applying to re-join the Lugano Convention in our own right at a later date.
Regulation 1214/2012, the EU Denmark Agreement and Lugano Convention determine the jurisdiction in which a case is to be brought.   Those instruments also require courts in other countries to stay proceedings once an action in another court begins and to enforce any judgment of that court as though it were a decision of their own.

When those instruments cease to apply to the UK there will be nothing to prevent forum shopping,  actions in the same matter proceeding in the UK and an EU member state, a proliferation of anti-suit injunctions and delays and complications on enforcement.  As courts in the UK will lose the right to refer preliminary issues to the Court of Justice of the European Union, exclusive jurisdiction clauses may be disregarded.  All this is likely to increase costs and give rise to uncertainty that did not exist before.  Businesses do not like such uncertainty. It is not surprising that the Bar Council has heard of parties being advised not to choose English law to govern their contracts where previously it would have been an almost automatic choice or of litigation being started in other member states that would otherwise have begun in London

In intellectual property litigation, these difficulties will be compounded by courts in the UK ceasing to be EU trade mark and Community design courts and a gradual divergence of trade mark and design law.  Also, it is hard to see how the UK could remain a party to the Unified Patent Court Agreement. This matters because the strength of the local protection of brands, design and technologies is one of the factors that investors take into account when deciding where to locate and even maintain manufacturing or distribution facilities.

Other reasons for English preeminence were the Privy Council as the court of last resort for countries in the Commonwealth and the use of the English language.  The importance of the Privy Council as the hub of the common law world has diminished as more and more countries of the Commonwealth have abolished the right of appeal to London.  As for the use of English, the Netherlands has already established a commercial court in Amsterdam in which proceedings can be conducted in English (see Jane Lambert  An English Speaking Commercial Courts in the Netherlands 28 Jan 2017 NIPC News) and there are reports that other countries are doing the same (see Kate Wilson Paris opens English speaking court 28 Feb 2018 Economia).

The Bar Council has urged the government to enter into an agreement based on the Denmark-EU Jurisdiction Agreement and also to sign and ratify the Lugano II Convention and the 2005 Hague Convention on the Choice of Court Agreements,  According to the joint paper 
"In the event of no deal, we would take the necessary steps to formally re-join the 2005 Hague Convention on Choice of Court Agreements in our own right (we currently participate because of our EU membership). It is anticipated that the convention would come in to force across the UK by 1 April 2019,"
If there us an implementation period pursuant to a withdrawal agreement it is hoped that British negotiators will use the time to negotiate agreements similar to Lugano and Danish agreement.  The government has already indicated that it aims to do so in paragraph 1.7.7. of its white paper, The future relationship between the United Kingdom and the European Union.

Anyone wishing to discuss this article or any of the subjects mentioned in it should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Sunday, 21 October 2018

Plant Breeders' Right after Brexit

A Saline Resistant Wheat Variety
Author US Department of Agriculture
Licence Copyright waived by US government
Source Wikipedia "Plant Breeding"






















Jane Lambert

plant breeders' right is the exclusive right to prevent reproduction, marketing, selling and certain other acts in relation to new plant varieties.  Plant breeders can acquire those rights for the UK alone by registering  the plant variety with the Plant Variety Rights Office in Cambridge. Alternatively, they can obtain such protection in all 28 EU member states including the UK by registering it with the Community Plant Variety Office ("CPVO") in Angers.

The legislation that established the CPVO and provides for plant breeders' rights throughout the EU is Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights ("the Plant Variety Rights Regulation").  That regulation will cease to apply to the UK once it leaves the EU by reason of art 50 (3) of the Treaty of European Union.  If HM government concludes a withdrawal agreement substantially on the terms of the draft that has circulated since the end of February the regulation will continue to apply to the UK until 31 Dec 2020.   If this country leaves without such an agreement the regulation will cease to apply after 29 March 2019.

On 12 Oct 2018 the Department for Agriculture, Food and Rural Affairs published a guidance note entitled Plant variety rights and marketing of seed and propagating material if there’s no Brexit deal in case the UK leaves the EU without a withdrawal agreement.  According to the note, existing Community plant variety rights belonging to British rights holders will continue to be recognized and enforced in the remaining EU member states. They will also be recognized and protected in the UK presumably because the regulation will be incorporated into our national law by s.3 of the European Union (Withdrawal) Act 2018.

The guidance states that where an application has been made to the CPVO but not granted before the UK leaves the EU, the applicant must make a fresh application to the Plant Variety Rights Office. However, the applicant will keep the same priority date and rely on the same test for distinctiveness, uniformity and stability.

The CPVO issued a Notice to Stakeholders regarding the withdrawal of the UK and EU rules in the field of Plant Variety Rights on 30 Jan 2018.

Anyone wishing to discuss this article or plant breeders' rights generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.

Friday, 19 October 2018

Copyright and Related Rights after Bexit







































Jane Lambert

Copyright is the exclusive right to copy, publish, perform, rent or lend, make available to the public, communicate to the public or make an adaptation of an original artistic, dramatic, literary or musical work, broadcast, film or sound recording or typographical arrangement of a published work.   Unlike patents, trade marks and registered designs they come into being automatically.   They do not need to be registered with the Intellectual Property Office or other agency.

Related Rights
Related rights are rights that are similar to copyright in that they also protect creative output.  In the UK they include
  • rights in performances such as the right of an actor, dancer, musician, singer or other performer to object to the broadcasting, filming or taping of his or her live performance' 
  • unregistered design right which is the exclusive right to make articles to  an original design; and
  • database right which is the right to prevent extraction and unauthorized re-utilization of the contents of  a database.
Those rights also come into being automatically and do not have to be registered.

Effects of Brexit
Brexit will be less disruptive of copyright and related rights than of trade marks, registered designs, plant varieties or even patents.  The main change will be the loss of rights under the following legislation:
If the UK concludes a withdrawal agreement in accordance with the draft that was first published at the end of February 2018, those rights will continue until at least the 31 Dec 2020.  If the UK leaves without a withdrawal agreement, the rights will be lost on 29 March 2019.

Database Rights
The Database Directive creates a new intellectual property right known as "database right".  Art 11 (1) of the directive provides that database rights shall apply only to databases whose makers or rights holders are nationals of a member state or who have their habitual residence in the territory of the EU.  If and when the UK leaves the EU, British makers and rights holders will cease to be nationals or habitual residents of an EU member state.

The Database Directive is implemented in the UK by The Copyright and Rights in Databases Regulations 1997.   There is no reason why those regulations should not remain in force though the qualification requirements in reg 18 would have to be amended if new British databases are to be protected.  However, databases made or owned by British nationals or residents are unlikely to be protected anywhere in the EU.

In its guidance Copyright if there's no Brexit deal , the Department for Business, Energy and Industrial Strategy suggests that "UK owners may want to consider relying on other forms of protection (e.g. restrictive licensing agreements or copyright where applicable) for their databases." The problem with that suggestion is that copyright is not the same as database right. Copyright subsists in the selection or arrangement of the contents of a database in so far as they constitute the author's own intellectual creation.  Database right, on the other hand, is the right to prevent unauthorized extraction and re-utilization of the contents of that database.  As for restrictive licensing, there must be something to license.  If database right no longer subsists in a British owned database it is less than obvious how a restrictive licence could work.  A better solution might be to incorporate a subsidiary company in one of the remaining EU member states and to assign the copyright and database rights in the database to the subsidiary.

Portability of Online Content   
Since 1 April 2018 it has been possible for subscribers to online content such as film, music or sport in one EU member state to continue to receive that content in the rest of the EU.   Art 3 (1) of Regulation 2017/1128 makes clear that that service is available only to citizens of EU member states.  After the UK leaves the EU, service providers must cease to provide access to online content to British subscribers when they visit the EU.   There is nothing to prevent content providers that establish themselves in another member state from continuing to provide their services to citizens of other member.

Satellite Broadcasting
Directive 93/83/EEC enables satellite broadcasters in one member state to transmit to the rest of the EU material that has been cleared in the member state of origin.   When the UK ceases to be a member of the EU, British broadcasters will lose the benefit of that Directive.   Anything that they transmit from the UK to another EU country will have to be cleared for reception in that country.  If a broadcaster wants to broadcast the programme to more than one member state, he or she must clear the programme in each and every country.

Orphan Works  
Orphan works are works in which copyright subsists but the owner of such copyright is unknown. Art 6 (1) of Directive 2012/28 provides an exception to copyright law that enables libraries, art galleries, museums and other institutions in the EU to make digital copies of such works available online.  That exception could no doubt continue for the UK but British institutions will lose that exemption in the remaining member states. They will risk infringement claims by the owners of copyrights in orphan works if they continue to provide such material to the rest of the EU.

Collective Rights Management
Directive 2014/26 enables a collecting society or other collective rights management organization in one member state to grant online music licences for the rest of the EU.  After the UK leaves the EU British collective management organizations will cease to be able to mandate collective management organizations in the EU to grant multi-territorial licences of online rights in music.  

Marrakesh Treaty
The Marrakesh Treaty requires contracting parties to create exceptions to their copyright laws to enable copies of copyright works to be made for blind or visually impaired persons.  Her Majesty's Government intends to accede to that treaty but has not yet done so.   At present, publishers of works for blind and visually impaired persons can rely on Regulation 2017/1563 as it allows the cross-border transfer of accessible format copies of copyright works between EU member states and with other countries that have ratified the treaty. If the UK leaves the EU before this country accedes to that treaty there will be a hiatus during which time it will not be possible to import accessible materials from, or export such materials to, the UK without the licence of the copyright owner.

Further Information
The Department for Business's guidance urges those who are likely to be affected by the above changes to seek professional advice.  Anyone wishing to discuss this article or copyright and related rights generally should call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form.

Monday, 15 October 2018

EU Trade Marks and Community Designs after Brexit

Jane Lambert











At present it is possible to register a trade mark with the European Union Intellectual Property Office ("EUIPO") for the whole European Union including the United Kingdom as an EU trade mark ("EUTM"). Similarly, it is possible to register a design with the EUIPO for the whole EU including the UK as a registered Community design ("RCD").  Designs that are capable of being registered as RCDs are protected automatically from copying for 3 years from being made available to the public as unregistered Community designs ("UCD"). All those rights were created by regulations made under EU treaties that cease to apply to the UK when it leaves the EU.

If HM government concludes a withdrawal agreement with the EU before 29 March 2019, those regulations will continue to apply to the UK until 31 Dec 2020 when it is hoped that a new relationship with the EU will be in place.  If the UK leaves on 29 March 2019 without a withdrawal agreement, the provisions contained in the regulations will be preserved in the UK by s.3 of the European Union (Withdrawal) Act 2018.  The regulations will, of course, continue to apply in the states that remain in the EU.

It appears from the guidance Trade marks and designs if there’s no Brexit deal that legislation will be introduced to enable applicants for an EUTM or RCD at the time of Brexit to apply to the UK Intellectual Property Office ("the IPO" for simillar trade mark or registered design protection.  They must make their application within 9 months of Brexit.  They will be able to retain the date of the EU application for priority purposesI.   Owners of EUTMs and RCDs will be able to convert their registrations into British trade marks or registered designs "with minimal administrative burden."  The guidance states that the "UK is also working, including with the World Intellectual Property Organisation, to provide continued protection in the UK from March 2019 for trade marks and registered designs filed through the Madrid and Hague Systems, and designating the EU as the area where they apply."

The implications for EUTM and RCD owners will be as follows:
  • "existing registered EU trade marks or registered Community designs held will continue to be valid in the remaining EU member states
  • protection of existing registered EU trade marks or registered Community designs in the UK will be through a new, equivalent UK right which will be granted with minimal administrative burden
  • right holders will be notified that a new UK right has been granted. Any business, organisation or individual that may not want to receive a new comparable UK registered trade mark or design will be able to opt out
  • provision will be made regarding the status of legal disputes involving EU trade marks or registered Community designs which are ongoing before the UK courts and more information will be provided on this before the point at which the UK exits the EU
  • applicants with a pending application for an EU trade mark or a registered Community design at the point of exit will be able to refile, within nine months from the date of exit, under the same terms for a UK equivalent right, retaining the EU application date for priority purposes
  • applicants with pending applications for an EU trade mark or a registered Community design will not be notified and after exit will need to consider whether they refile with the Intellectual Property Office to obtain protection in the UK
  • new applications will be eligible to be filed in the UK for UK trade marks and registered designs as they are now, and at the cost specified in the UK fee structure
  • UK applicants, like EU and third country applicants, will continue to be able to apply for protection in the EU through an EU trade mark or registered Community design as they do currently,"
Finally, the guidance announces that a new intellectual property right, to be known as a "supplementary unregistered design right" with the characteristics of an UCD, will be established.  The guidance notes:
  • "existing unregistered Community designs will continue to be valid in the remaining EU member states
  • protection of existing unregistered Community designs in the UK will be provided for with no action required by the right holder
  • provision will be made regarding the status of legal disputes involving unregistered Community designs which are ongoing before UK courts."

Anyone wishing to discuss this article or Brexit generally should call me on +44 (0)20 7404 5252 during the usual office hours or send me a message through my contact page.

Tuesday, 9 October 2018

Brexit Briefing September 2018

Treading Water
Author Lance corpora; Erin McKnight
Licence Copyright waived by US government
Source Wikipedia
















Jane Lambert

The theme of this month's Brexit Briefing is treading water.  There have been a lot of events like the Salzburg summit and Mrs May's reaction to it, the Labour and Tory Party conferences and the publication of Guidance on how to prepare for Brexit if there's no deal.  The government has not fallen. The white paper on the future relationship with the EU has not been abandoned.  There is growing popular support for a second referendum in all the political parties despite resistance from the Prime Minister and very lukewarm support from the Leader of the Opposition.

It is clear from the government's guidance notes that exiting the EU on 29 March 2019 would come at a cost for most businesses.   I have reviewed just two of those notes on patents (see Patents if there is no deal 3 Oct 2018) and geographical indications (see Geographical Indications after Brexit 6 Oct 2018 NIPC Branding).  It would also be bad for at least some of our neighbours as Dáithí O’Ceallaigh, a former Irish ambassador to London, explained in his lecture at Cardiff University on 28 Feb 2018 (see Brexit from an Irish perspective - Dáithí O’Ceallaigh  YouTube 28 Feb 2018).   Yet that is what will happen unless agreement is reached on every issue in negotiation including the thorny issue of the Irish border.

Yet how to avoid checks and inspections between one country that is within the single market and another that is not is a conundrum to which there seems to be no obvious solution.   If, for example, free movement of labour is permitted by Ireland but not by the UK, what is there to stop a migrant from another part of the EU from flying to Dublin and then taking a train to Belfast or indeed a ferry to Fishquard.

The possibility of a further referendum with "remain" being an option is unlikely but slightly less unlikely than it was a month ago.   It could result from a stalemate in Parliament between those favouring a clean break Brexit now and those desiring as little disruption of trade and investment with the remaining member states as possible.

As the outcome could be a sharp sudden break  on 29 March, an implementation period between 29 March and 31 Dec 2020 or maybe even no Brexit at all, treading water seems a sensible option for most businesses, certainly over the next few months.

Anyone wishing to discuss this briefing or the consequences of Brexit generally should call me on 020 7404 5252 or send me a message through my contact form.

Post Script
The Rt Hon Dominic Raab MP has delivered this statement to the House of Commons on the withdrawal agreement negotiations and HM government's preparations for quitting the EU without such an agreement.

Wightman and Others v Secretary of State for Exiting the European Union

Court of Justice of the European Union Author  Cédric Puisney  Licence  Creative Commons Attribution 2.0 Generic ...