British Intellectual Asset Owners' Rights after Brexit: IP Provisions of Bilateral Investment Treaties and Free Trade Agreements

Rt Hon Elizabeth Truss MP

Author  Chris McAndrew - Licence CC BY 3.0

Jane Lambert

Tomorrow I shall deliver a talk entitled  Bilateral Investment Treaties & Exporters' Rights Post-Brexit to the IP Law Summer School. I first gave that talk on 17 Aug 2017 a few months after Mrs Theresa May had served notice under art 50 (2) of the Treaty on European Union of the UK's intention to leave the EU and negotiations on the terms of its withdrawal were at a very early stage, I delivered an updated version of that talk on 15 August 2019 after the government had lost its majority.   At that time, there was uncertainty as to whether the UK would leave the EU with or without a withdrawal agreement or even whether the UK would leave the EU at all. 

It has become necessary for me to update my talk again because there has now been a general election at which the government secured a sufficient majority in the House of Commons to withdraw from the EU on the terms of the Agreement on the withdrawal of the United Kingdom of Great Britain and Nothern Ireland from the EuropeanUnion and the European AtomicEnergy Community ("the withdrawal agreement").  In accordance with art 50 of the Treaty, the government has also agreed to a Political Declaration setting out the framework for the future relationship between the European Union and the United Kingdom  ("the political declaration").   This country left the EU at 23:00 on 31 Jan 2020 and is now in a period of transition that is due to last until 31 Dec 2020 during which EU law continues to apply to the UK. The purpose of the transition period is to enable officials from the UK and EU to negotiate terms for a new relationship after the expiry of that period. In addition to its negotiations with the EU, the government is in negotiations with the governments of a number of other countries, notably Australia, Japan, New Zealand and the USA, for new free trade agreements.   It has also announced its intention to apply to join the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (see the Department for International Trade's update of 17 June 2020).

British businesses have benefited from this country's membership of the European Union in the following respects.  First, the substantive laws on copyrights, databases, designs, rights in performances, trade marks, trade secrets and supplementary protection certificates have been harmonized thereby facilitating their legal protection.  Secondly, it has become possible to protect brands, designs and plant varieties across the EU with EU trade marks and Community designs and plant varieties. Thirdly, the rights of EU intellectual asset holders including those from the UK have been extebded beyond Europe in the free trade and other agreements that the EU has made with third countries.  These benefits will come to an end on 31 Dev 2020   The purpose of tomorrow's talk is to consider the new environment for British business so far as it relates to intellectual property.

Some of the present arrangements will not change.   The UK will continue to be bound by the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") as it will remain a party to the Marrakesh Agreement Establishing the World Trade Organization.  Similarly, it will remain a member of the World Intellectual Property Organization ("the WIPO") and party to the Paris, Berne, Rome and other international intellectual property conventions to which it has already subscribed including the European Patent Convention and the Patent Cooperation Treaty.  Several countries that have negotiated free trade agreements with the EU have agreed to continue to trade with the UK on a similar basis.

As for the remaining member states of the EU, the withdrawal agreement contains a number of provisions that relate to intellectual property.   The political declaration binds the UK and EU as follows:

"42. The Parties should provide for the protection and enforcement of intellectual property rights to stimulate innovation, creativity and economic activity, going beyond the standards of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights and the World Intellectual Property Organisation conventions where relevant.
43. This should preserve the Parties' current high levels of protection, inter alia, of certain rights under copyright law, such as the sui generis right on databases and the artists' resale right. Noting the protection afforded to existing geographical indications in the Withdrawal Agreement, the Parties should seek to put in place arrangements to provide appropriate protection for their geographical indications.
 44. The Parties should maintain the freedom to establish their own regimes for the exhaustion of intellectual property rights.
45. The Parties should establish a mechanism for cooperation and exchange of information on intellectual property issues of mutual interest, such as respective approaches and processes regarding trademarks, designs and patents."

Both the EU's draft agreement of 18 March 2020 and the British government's counter-proposals for a comprehensive free trade agreement of 19 May 2020 contain extensive provisions on intellectual property.

The Comprehensive and Progressive Agreement for Trans-Pacific Partnership contains provisions against expropriation of investments and dispute resolution provisions that are similar to those found in the bilateral investment treaties that the British government has negotiated with a number of countries.  Such provisions entitle individual investors to seek compensation from a national government for the expropriation of their investment which could possibly include the revocation of patents or the loss of an opportunity to market products by reference to a trade mark because of a public health concern. Any free trade agreement that is likely to be negotiated with Australia, Japan, New Zealand and the USA can be expected to contain similar provisions.

Anybody wishing to discuss this article or any of its issues should contact me on +44 (0)20n 7404 5252 during office hours or send me a message through my contact form.

The Netherlands Commercial Court - an English Speaking Court in Amsterdam

By Stephencdickson - Own work, CC BY-SA 4.0,
https://commons.wikimedia.org/w/index.php?curid=72838371

Jane Lambert

On 28 Jan 2017, I wrote about a proposal to establish an English language commercial court in the Netherlands (see Jane Lambert An English Speaking Commercial Court in the Netherlands 28 Jan 2017 NIPC News).  In a Zoom call on Friday to an old friend who practises at the Dutch bar, I learned that the proposal was adopted by the Dutch parliament on 11 Dec 2018. An English speaking chamber within the Amsterdam District Court known as the Netherlands Commercial Court opened on 1 Jan 2019.

It appears from the website, A practitioner's guide to commercial litigation in the Netherlands, that the Netherlands Commercial Court has both original and appellate jurisdiction. Unlike the recently established English speaking courts in Abu Dhabi, Doha, Dubai and Nur Sultan, the Netherlands Commercial Court is a civil law jurisdiction which will apply Dutch substantive and procedural law.  Dutch procedural law provides a number of extraterritorial interim remedies that are not available in other jurisdictions and litigation in the Netherlands is believed to be considerably less expensive than in most common law jurisdictions.   Perhaps most importantly, Regulation 1215/2012 will continue to apply to the Netherlands after the 31 Dec 2020.

According to its list of judgments, the Court has given 6 judgments since it opened.   That may not sound a lot but it is a new jurisdiction with which foreign lawyers and businesses have had very little time to be acquainted.   I have just subscribed to its mailing list and will monitor its progress.  Anyone wishing to discuss this article should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Brexit Briefing July 2020

Standard YouTube Licence

Jane Lambert

Talks between negotiators for the British government and the European Commission continued throughout July with no signs of a breakthrough on the four stumbling blocks identified by Michel Barnier in his statement of 2 July 2020 which I mentioned in my June Brexit Briefing, 

However, others have found some signs of hope.  Phil Hogan, the Trade Commissioner told The Guardian that British negotiators have begun to engage on the issues in the last week or two and that there has been "a change of attitude" from No 10 "after pressure from business" (see Daniel Boffey UK negotiators have only engaged with issues 'in last week or two', says EU 29 July 2020 The Guardian).  Charles Grant, Director of the Centre for European Reform, wrote I'm optimistic about a Brexit deal – despite the gloomy outlook in the same newspaper that same day. 

We shall have to wait and see.  If there is any substance to those reports it will be ironic because it was supposed to be German carmakers and Italian white goods manufacturers who were supposed to force concessions from the EU and not the other way round.

On 15 July 2020, the Cabinet Office published images, branding and other communication resources for the UK Transition campaign in England, Wales, Scotland and Northern Ireland to prepare the public and industry for the changes that will occur on 1 Jan 2021 (see Cabinet Office UK Transition communications resources 15 July 2020).

It is believed that trade negotiations are continuing with the governments of a number of countries on new free trade and other agreements but very little news on their progress has been published by the Department for International Trade or their negotiating partners.  The only one of those negotiations that is likely to lead to an agreement by 31 Dec 2020 is the proposed free trade agreement with Japan which will be with Japan.  The proposed agreement will be similar to the one that Japan has negotiated with the EU.

The Department for International Trade has introduced a Trade Bill which had its first reading in the House of Lords on 21 July 2020.  The purpose of the bill is "to make provision about the implementation of international trade agreements; to make provision establishing the Trade Remedies Authority and conferring functions on it, and to make provision about the collection and disclosure of information relating to trade."  It consists of 14 clauses and 5 schedules.  A set of Explanatory Notes is available on the British Parliament's website.1

Anyone wishing to discuss this briefing or any of the topics mentioned in it is welcome to call me on 020 7494 5252 or send me a message through my contact form.