Intellectual Property Post Brexit

Author Furfur  Licence CC BY-SA 4.0 Source Wikipedia Brexit

Jane Lambert

While many regret the UK's departure from the EU, it could have been so much worse.  There was a very real danger that the 2 year notification period provided by art 50 (3) of the Treaty of European Union would expire without any agreement on the arrangements for British withdrawal and that the rules that had governed the UK's relations with its nearest neighbours, closest allies and biggest market would simply cease to apply. The Agreement on the withdrawal of theUnited Kingdom of Great Britain and Nothern Ireland from the European Union and the European Atomic Energy Community sets out the terms upon which the country leaves the EU and the Political Declaration setting out the framework for the future relationship between the European Union and the theUnited Kingdom maps out the path for future cooperation.

Art 126 of the Withdrawal Agreement provides for a transition or implementation period between 1 Feb and 31 Dec 2020 during which time European Union law will continue to apply to the UK.  That is implemented by s.1 of the European Union (Withdrawal Agreement) Act 2020 which inserts a new s.1A into the European Union Withdrawal Act 2018 suspending the repeal of the law-making provisions of the European Communities Act 1972 until the end of the transition period,   Title IV of the Agreement contains provisions converting EU trade marks and registered Community designs and Community plant varieties into British trade marks, registered designs and plant breeders; rights from 1 Jan 2021.   I discussed those provisions while they were in draft form in The Intellectual Property Provisions of the Draft Withdrawal Agreement on 19 Nov 2018.

The upshot is that Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark OJ L 154, 16.6.2017, p. 1–99, Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs OJ L 3, 05/01/2002 P. 1 - 24 and Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights OJ L 227, 1.9.1994, p. 1–30 continue to apply to the UK until 31 Dec 2020.  As the Intellectual Property Office's news story, Intellectual property and the transition period published 29 Jan and updated 31 July 2020, points out, EU trade marks and Community designs and plant varieties remain in force. International registrations for trade marks and designs protected via the Madrid and Hague systems which designate the EU will continue to extend to the UK.  The courts of the UK that have been designated EU Trade Mark and Community Design courts will retain their jurisdiction for the rest of the year.

The same applies to other EU legislation including Regulation (EC) No 469/2009 on supplemental protection certificates for medicinal products and Regulation (EU) 2017/1128 of the European Parliament and of the Council of 14 June 2017 on cross-border portability of online content services in the internal market and to rules of law such as the exhaustion of rights doctrine. Judges in the UK can continue to refer questions of EU law to the Court of Justice of the European Union for preliminary rulings under art 267 of the Treaty on the Functioning of the European Union.  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 OJ L 351, 20.12.2012, p. 1–32 will continue to apply.

These arrangements will end on 31 Dec 2020  but most rights holders will continue to be protected.  Instead of their EU trade marks and registered Community designs and plant varieties, proprietors will rely on their equivalent UK intellectual property rights.  A new British supplemental unregistered design right will apply to designs that are protected as unregistered Community designs. Proprietors of plant protection and medicinal product inventions may continue to apply for supplemental protection certificates.   These and other matters are discussed in greater detail in my article of 19 Nov 2018. 

In that article I wrote:

"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."

According to Geoffrey Bacon of Bristows, there are indications that the German Federal Constitutional Court could deliver judgment on a challenge to German ratification of the Unified Patent Court Agreement in the next few weeks (see Bacon Update on BVerfG cases allocated to Justice Huber, the UPC case rapporteur 23 Jan 2020 Bristows UPC website).  The European Patent Office has confirmed its readiness to grant unitary patents. Decisions on continued British participation and probably the future of the project will, therefore, have to be made before the end of this year.

Anyone wishing to discuss this article or IP and British withdrawal from the EU generally may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.