The IP Provisions of the Future Relationship Agreement with Iceland, Liechtenstein and Norway

Stilton Cheese

Author Dominik Hundhammer

Licence Creative Commons Attribution-Share Alike 3.0 unported

Source Wikipedia

Jane Lambert

In Future Relationship Agreements with the EFTA States 3 Jan 2018 I explained that future relationship agreements were required not just with the remaining member states of the European Union but also with the member states of the European Free Trade Association ("EFTA").  All the EFTA states except Switzerland are members of the European Economic Area ("EEA") which provides for free movement of labour. As a result, significant numbers of British citizens to live in Iceland, Liechtenstein, Norway and Switzerland and many Icelandic, Liechtenstein, Norwegian and Swiss citizens have moved here.  As the current British government believes that the Brexit referendum result requires the UK to leave the EEA as well as the EU, provision has to be made for those expatriates as well as for the continuation of accrued rights of businesses and individuals that have been acquired under the EU legislation that extends to the whole of the EEA.

The governments of Iceland, Liechtenstein, Norway and the United Kingdom have addressed those issues in an Agreement on arrangements between Iceland, the Principality of Liechtenstein, the Kingdom of Norway and the United Kingdom of Great Britain and Northern Ireland following the withdrawal of the United Kingdom from the European Union, the EEA Agreement and other agreements applicable between the United Kingdom and the EEA EFTA States by virtue of the United Kingdom’s membership of the European Union which they announced on 20 Dec 2018.  I discussed that agreement in my article yesterday.  One of the issues covered by that Agreement is intellectual property.   The provisions on intellectual property fall within Title II of Part Three of the Agreement.  Arts 46 and 47 deal with geographical indications, art 48 continued protection of databases and art 49 exhaustion of rights. 

In Geographical Indications after Brexit 6 Oct 2018 NIPC Branding I mentioned the government's intention to set up the UK's own geographical indications scheme as announced at paragraph 39 of its white paper on The future relationship between the United Kingdom and the European Union Cm 6593 and its guidance Producing food products protected by a ‘geographical indication’ if there’s no Brexit deal which was originally published on 24 Sept 2018 and has been updated on 19 Dec 2018.  It would appear from the ponderous language of art 46 that the new British scheme will protect the geographical indications of products from the EFTA states for so long as they are protected in the EFTA states under the EU legislation that extends to those states:

"Where a geographical indication within the meaning of Regulation (EC) No 110/2008 of the European Parliament and of the Council, pertaining to a product of an EEA EFTA State, is protected on the last day of the transition period by virtue of that Regulation, those persons who are entitled to use the geographical indication concerned shall be entitled, as from the end of the transition period, without any re-examination, to use the geographical indication concerned in the United Kingdom, which shall be granted at least the same level of protection under the law of the United Kingdom as under the following provisions: 

(a)   point (i) of Article 4 (1) of Directive (EU) 2015/2436 of the European Parliament and of the Council; and 

(b)  in view of the geographical indication concerned, the first subparagraph of Article 15 (3), Article 16 and Article 23 (1) of Regulation (EC) No 110/2008 and, in so far as to the extent related to compliance with those provisions of that Regulation, Article 24 (1) of that Regulation. 

Where a geographical indication referred to in the first subparagraph ceases to be protected in the EEA EFTA States after the end of the transition period, the first subparagraph shall cease to apply in respect of that geographical indication. 

The first subparagraph shall not apply where protection in the EEA EFTA States is derived from international agreements, other than the EEA Agreement, to which the EEA EFTA States are party. 

This Article shall apply unless and until an agreement that supersedes this Article enters into force or becomes applicable."

 Art 47 (1)  of the Future Relationship Agreement requires no charge to be made for the registration, grant or protection of a geographical indication under the new British scheme.  Indeed, art 47 (2) makes clear that it will not even be necessary to make an application or undertake any particular administrative procedure to gain protection under the new scheme.  However, art 47 (3) reserves a right for the British government to charge renewal fees under its proposed new scheme and allows for the surrender of rights under such scheme.

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. 20–28) required EEA member states to create a new intellectual property right known as "database right"to protect investment in obtaining, verifying and presenting the contents of a database.  One of the conditions for the subsistence of database right is that the person who takes the initiative in obtaining, verifying or presenting the contents of a database and assumes the risk of investing in that obtaining, verification or presentation ("the maker") is a national, corporation or partnership that includes a national of a European Economic Area member state. In the absence of any agreement, nationals, corporations and partnerships from the UK will lose database protection in Iceland, Liechtenstein and Norway after the UK leaves the EEA and, conversely, databases made by makers in those states will lose their database rights protection here.  Art 48 provides for the continued protection of the database rights of British makers in Iceland, Liechtenstein and Norway and for the continued protection of Icelandic, Liechtenstein and Norwegian makers here.

The doctrine of exhaustion of rights can be summarized as follows.  Once a product that is protected by an intellectual property right ("IPR") has been sold by or with the consent of the owner of that right, the IPR right is said to be exhausted, that is to say, it can no longer be exercised by the owner of the right.  A good example of that doctrine and its application to the EEA is provided by s.12 (1) of the Trade Marks Act 1994:

"A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent."

After the UK leaves the EEA this provision will no longer apply to Iceland, Liechtenstein and Norway in the absence of a specific agreement to the contrary.  Art 49 of the Future Relationship Agreement provides that IPR which were exhausted both in those states and in the UK before the end of the transition period under the provisions of the EEA Agreement shall remain exhausted both in those states and in the UK.

The Future Relationship Agreement refers in many places to a transition or implementation period which will come into being only if the UK concludes the draft withdrawal agreement with the remaining EU member states.  If the UK leaves the EU without such an agreement, the Future Relationship Agreement would require substantial last-minute modification if indeed it were to come into effect at all.  The negotiations with the EEA states have been carried out without much fuss or publicity and the Future Relationship Agreement is a lot simpler and shorter so renegotiation may be possible if all parties retain the political will to do so.

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