|EU Intellectual Property Office, Alicante|
In Were we to go - what would Brexit mean for IP? (26 Feb 2016 NIPC Law) I first considered the consequences of Britsh withdrawal from the European Union. It was obvious that EU trade marks, Community designs and Community plant varieties would cease to apply to the UK. Also, I could not see how the UK could remain a party to the Unified Patent Court Agreement as the agreement was open only to EU member states. I considered the topic further in IP Planning for Brexit on 7 Dec 2016 in Implications of Brexit on Intellectual Property Law: What can be salvaged from the UPC Agreement on 17 Feb 2017 and in my contribution on IP to Helen Wong's Doing Business After Brexit. As the UK has withdrawn from the EU and the transitional period is over, it is now possible to take stock.
Art 50 Treaty on European Union ("TEU")
"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 Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (SI 2019 No 605),
- The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019 (SI 2019 No. 265),
- The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019 No 269),
- The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019 No 638), and
- The Plant Breeders’ Rights (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019 No 204).
The Withdrawal Agreement
Following further extensions in accordance with art 50 (3) TEU, the appointment of a new prime minister and more negotiations with the EU the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community ("the withdrawal agreement") was concluded on 19 Oct 2019. That agreement was ratified by the European Union (Withdrawal Agreement) Act 2020 on 23 Jan 2020.
- 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.
- 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.
Implementation of Title IV
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).