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EU Intellectual Property Office, Alicante
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Art 50 Treaty on European Union ("TEU")
A timetable for the UK's departure was set by art 50 of the TEU. Art 50 (2) requires the EU to negotiate and conclude an agreement with that departing state, setting out the arrangements for its withdrawal, taking account of the framework for its future relationship with the EU. Art 50 (3) adds:
"The Treaties shall cease to apply to the State in question from the date of entry into force of the withdrawal agreement or, failing that, two years after the notification referred to in paragraph 2, unless the European Council, in agreement with the Member State concerned, unanimously decides to extend this period."
The former Prime Minister, Mrs Theresa May MP, served notification of the UK's intended departure under art 50 (2) on 29 March 2017. Subject only to the possibility of an agreed extension to the notification period, the British government had to try to negotiate a withdrawal agreement and legislate for the UK's departure before 29 March 2019.
European Union (Withdrawal) Act 2018
The statute that effected the UK's departure from the EU was the European Union (Withdrawal) Act 2018. As EU law would cease to apply to the UK from the expiry of the notification period or the entry into force of a withdrawal agreement, s.3 (1) of the Act preserved Council regulations by incorporating them into the laws of the UK. These included the Council Regulations establishing EU trade marks, Community designs, Community plant varieties and supplementary protection certificates. S.8 (1) and Sched. 1 of the Act enabled Ministers to amend such Regulations by statutory instrument.
The 2019 Statutory Instruments
Since it was not certain that a withdrawal agreement could be made and ratified by the 29 March 2019, the following statutory instruments were made in case the UK left the EU without such an agreement:
The Patents (Amendment) (EU Exit) Regulations 2019 (SI 2019 No 801) were made on 4 April 2019 after an extension had been agreed in accordance with art 50 (3) TEU.
The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2019 (SI 2019 No 1366) were made on 21 Oct 2019.
The Withdrawal Agreement
Title IV of Part Three of the withdrawal agreement included the following provisions on IP:
- Art 54 provided for continued protection in the UK of intellectual assets that had previously been protected as EU trade marks, registered Community designs, Community plant varieties and geographical indications;
- Art 55 established a procedure for registering trade marks, designs and plant breeders' rights to protect such assets in the UK;
- Art 56 provided for continued protection in the UK of international trade marks designating the EU under the Madrid system and international designs designating the EU under the Hague Agreement;
- Art 57 provided for continued protection in the UK of unregistered Community designs that would have come into being before 23:00 on 31 Dec 2020 for the remainder of their term and the creation of a similar UK intellectual property right to protect such designs that might come into being afterwards;
- Art 58 required continued protection of databases;
- Art 59 provided for pending applications
for EU trade marks, RCD and Community plant variety rights;
- Art 60 provided for supplementary protection certificates' and
- Art 61 for the exhaustion of rights.
Although the UK left the EU on 31 Jan 2020 pursuant to the withdrawal agreement, art 126 provided for a transition or implementation period until 23:00 on 31 Dec 2020 during which time EU law would continue to apply to the UK.
The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020
Because of the extensions under art 50 (3) and the conclusion of a withdrawal agreement, the 2019 statutory instruments were not required until the end of the transition period. As they had been drafted before the withdrawal agreement was concluded, they had to be modified to give effect to Title IV of that agreement.
The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (SI 2020 No 1050) amended the 2019 statutory instruments as follows:
- Part 2 amended the Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019,
- Part 3 amended the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019,
- Part 4 amended the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019,
- Part 5 amended the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, and
- Part 6 amended the Patents (Amendment) (EU Exit) Regulations 2019.
Part 7 amended the Patents Act 1977 and
Part 8 and
the Schedule Council Regulation (EC) No 469/2009, Regulation EU) No 2019/933 and the Patent Rules 2007.
Implementation of Title IV
Title IV of the withdrawal agreement is implemented as follows:
EU Trade Marks: Reg 2 and
Sched 1 of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 as amended by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 implement the provisions of arts 54 and 55 of the withdrawal agreement relating to
EU trade marks. Sched. 1 of the Regulations inserts a new s.52A and Sched 2A into the Trade Marks Act 1994. They require an existing EU trade mark to be treated as registered under the Act. Para 2 provides an opt-out for those who do not want a national trade mark. Part 3 governs applications for European Union trade marks which are pending on 31 Dec 2018.
International Trade Marks Designating the EU: Reg 6 of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 as amended implements art 56 of the withdrawal agreement by inserting a new s.54A and Sched 2B into the Act. S. 54A provides for international trade marks designating the EU to be treated as though they had been registered under the Trade Marks Act 1994. Sched 2B establishes a procedure for the registration of such marks as US trade marks as well as certain other matters including an opt-out.
Registered Community Designs: Reg 5 and
Sched. 3 of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 implement the provisions of arts 54 and 55 of the withdrawal agreement relating to
registered Community designs. Para 2 of Sched. 3 inserts a new s.12A and a new s.12B into the Registered Designs Act 1949. Para 3 inserts a new Sched 1A and a new Sched 1B into the Act. S.12A and Sched 1A provide for existing registered Community designs to be treated as designs registered under the 1949 Act. S.12B and Sched 1B provide for international designs designating the EU are to be treated as though they had been registered under the 1949 Act.
Continuing Unregistered Community Designs: Reg 4 (3) and
Sched 2, of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 transpose into the laws of the UK the requirement in art 57 of the withdrawal agreement that designs that had been protected as UCD before the 31 Dec 2020 will continue to be protected afterwards. Any UCD that came into being before 23:00 on 31 Dec 2020 will continue to be protected in the UK for the remainder of its term as a
“continuing unregistered Community design”. Reg 4 (3) (a) and Part 1 of Sched. 2 of the 2019 Regulations anend the provisions of the Community Design Regulation that relate to unregistered Community designs. Reg 4 (3) (b) and Part 2 of Sched. 2 further amend The Community Design Regulations 2005 (SI 2005 No 2339).
Supplementary Unregistered Designs: The obligation in art 57 of the withdrawal agreement to protect new designs having individual character that come into being after 23:00 on 31 Dec 2020 by a new UK intellectual property right to be known as the "supplementary unregistered design" is implemented by
reg 3 and
Sched. 1 of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019. Part 1 of Sched. 1 amends the Community Design Directive and Part 2 The Community Design Regulations.
Plant Varieties: The requirement in art 54 (1) (c) of the withdrawal agreement that the holder of a Community plant variety right granted pursuant to
Council Regulation (EC) No 2100/942 shall become the holder of a plant variety right in the United Kingdom for the same plant variety is implemented by
reg 3 (2) of The Plant Breeders’ Rights (Amendment etc.) (EU Exit) Regulations 2019. The Regulations revoke Regulation 2100/942 and provide for the registration of Community plant variety rights as UK plant breeders' rights and the processing of pending applications for Community rights. The statutory instrument also amends the Plant Varieties Act 1997 and regulations made under that Act.
Supplementary Protection Certificates: Such certificates protect the active ingredients of patented pharmaceutical or plant protection products. for up to 5 years (and in the case of products used to treat children's diseases an extra 6 months) from the expiry of a patent for such a product. Art 60 (1) of the withdrawal agreement provides for
Regulation (EC) No 1610/96 and
Regulation (EC) 469/2009 to continue to apply to applications for SPCs lodged before 23:00 on 31 Dec 2020. That provision is implemented by the incorporation of those regulations into the laws of the UK and their amendment by
Part 6 and
Part 8 of The Patents (Amendment) (EU Exit) Regulations 2019 as amended. Further amendments have been made by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020.
Exhaustion of Rights: Art 61 of the withdrawal agreement is implemented by the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019 as amended by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020.
Unitary Patent and Unified Patent Court
Trade and Cooperation Agreement
Further Information
I intend to give a talk on these provisions over Zoom between 16:30 and 18:00 on Tuesday 26 Jan 2021. This talk will be free but attendees should register in advance
here. Anyone wishing to discuss this article or any of its contents may call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my
contact form.