EU's Exhaustion of Rights Doctrine to Remain in Force in UK

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Jane Lambert

Shortly before the UK-EU Summit on 19 May 2025, the Intellectual Property Office announced that the doctrine of exhaustion of rights will continue to apply to the UK even though the UK has left the European Union and notwithstanding that the doctrine will not apply in the opposite direction (see IPO press release Certainty for businesses and choice for consumers as UK maintains IP rights regime 15 May 2025).  In view of the furore over the so-called reset of relations between the UK and EU with threats from the Leader of the Opposition and Reform UK to reverse the deal it is surprising that the IPO's announcement has received so little attention in the press (see Badenoch vows to reverse Starmer's EU Deal The Telegraph 19 May 2022).

Exhaustion of Rights

The doctrine of exhaustion of rights was developed by the Court of Justice of the European Union to reconcile the tensions between arts 30 and 34 of the Treaty on the Functioning of the European Union.  Art 30 provides:

"Customs duties on imports and exports and charges having equivalent effect shall be prohibited between Member States. This prohibition shall also apply to customs duties of a fiscal nature."

Arts 34 and 35 supplement art 30 by prohibiting restrictions on imports and exports.  However, art 36 allows some exceptions:

"The provisions of Articles 34 and 35 shall not preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of public morality, public policy or public security; the protection of health and life of humans, animals or plants; the protection of national treasures possessing artistic, historic or archaeological value; or the protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States."

In Case 16/74 Centrafarm v Winthrop [1974] ECR 1183, the Court said:

"[7] Inasmuch as it provides an exception to one of the fundamental principles of the common market, Article 36 in fact only admits of derogations from the free movement of goods where such derogations are justified for the purpose of safeguarding rights which constitute the specific subject-matter of this property.
[8] In relation to trade marks, the specific subject-matter of the industrial property is the guarantee that the owner of the trade mark has the exclusive right to use that trade mark, for the purpose of putting products protected by the trade mark into circulation for the first time, and is therefore intended to protect him against competitors wishing to take advantage of the status and reputation of the trade mark by selling products illegally bearing that trade mark.
[9] An obstacle to the free movement of goods may arise out of the existence, within a national legislation concerning industrial and commercial property, of provisions laying down that a trade mark owner' s right is not exhausted when the product protected by the trade mark is marketed in another Member State, with the result that the trade mark owner can [oppose] importation of the product into his own Member State when it has been marketed in another Member State.
[10] Such an obstacle is not justified when the product has been put onto the market in a legal manner in the Member State from which it has been imported, by the trade mark owner himself or with his consent, so that there can be no question of abuse or infringement of the trade mark.
[11] In fact, if a trade mark owner could prevent the import of protected products marketed by him or with his consent in another Member State, he would be able to partition off national markets and thereby restrict trade between Member States, in a situation where no such restriction was necessary to guarantee the essence of the exclusive right flowing from the trade mark."

In Case C-9/93 IHT Internationale Heiztechnik GmbH and Uwe Danzinger v Ideal-Standard GmbH and Wabco Standard GmbH. (Free movement of goods) [1994] ECR I-2789, [1994] EUECJ C-9/93, the Court explained the principle of exhaustion of rights at para [34]:

"So, application of a national law which would give the trade-mark owner in the importing State the right to oppose the marketing of products which have been put into circulation in the exporting State by him or with his consent is precluded as contrary to Articles 30 and 36. This principle, known as the exhaustion of rights, applies where the owner of the trade mark in the importing State and the owner of the trade mark in the exporting State are the same or where, even if they are separate persons, they are economically linked. A number of situations are covered: products put into circulation by the same undertaking, by a licensee, by a parent company, by a subsidiary of the same group, or by an exclusive distributor."

 Brexit

Although art 61 of 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 provided that intellectual property rights which were exhausted both in the EU and in the UK before the end of the transition period under the conditions provided for by EU law should remain exhausted both in the EU and in the UK, the doctrine ceased to apply to the UK after the end of that period.   The IPO published guidance entitled 
Exhaustion of IP rights and parallel trade on 30 Jan 2020.

Consultation

In a Consultation document on the UK’s future regime for exhaustion of IP rights, first published on 7 June 2021 and subsequently updated, the IPO noted:

"The concept of exhaustion has built up over many decades. When the UK was part of the EU, the UK was part of the EU’s regional exhaustion regime. The principle of exhaustion of rights is derived from the provisions concerning the prohibition of qualitative restrictions in the Treaty on the Functioning of the EU (and the EEA Agreement) as interpreted by EU case law and was specifically recognised in various EU Directives as implemented into domestic legislation. As a result of domestic legislation concerning EU exit this principle continues to have the same effect in domestic law as it had before the end of the implementation period (the UK’s unilateral application of the EEA regional regime). In particular, the principle of exhaustion is relevant to section 7A of the Registered Designs Act 1949, sections 18 and 27 of the Copyright, Designs and Patents Act 1988 and section 12 of the Trade Marks Act 1994."

Between 7 June and 31 Aug 2021, the IPO consulted on the following options:

• UK’s unilateral application of a regional EEA regime, otherwise known as a “UK+” regime:  Inbound parallel import of goods only automatically permitted from EEA countries (assuming there is separate authorisation for regulated goods such as medicines);
• National: Inbound parallel import of goods not automatically permitted from any country; 
• International: Inbound parallel import of goods automatically permitted from any country (assuming there is separate authorisation for regulated goods such as medicines); and 
• Mixed: Ability to parallel import will depend on any decision on treatment for a specific IP right, good or sector.

None of those options provided for parallel export of goods except to countries with an international regime.   The consultation document explored each of those options.   A response form asked consultees for their views.

Response 

According to para 45 of the Government response to the consultation on the UK’s future exhaustion of intellectual property rights regime. HMG received 150 responses:  120 from businesses and organizations, 17 from individuals and 13 from respondents who failed to state whether they were businesses, organizations or individuals.   A list of the corporate respondents can be found in the Government Response at para 46.  The responses are summarized in UK’s future exhaustion of intellectual property rights regime: Summary of responses to the consultation.

Outcome

According to the IPO's press release, HMG has opted for UK+.   This will not require new legislation. The Intellectual Property (Exhaustion of Rights) (Amendment) Regulations 2023 SI 2023 No 1287 will continue to apply.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact page at any time.

The REUL (Revocation and Reform) Act 2023 - Third Update

Jane Lambert

 

The Retained EU Law (Revocation and Reform) Bill received royal assent on 29 June 2023 and is now law (see Retained EU Law (Revocation and Reform) Act 2023 ("REUL")),   I outlined the bill in Retained EU Law (Revocation and Reform) Bill on 22 Oct 2022 and tracked its progress in my first and second updates on 6 Dec 2022 and 5 Feb 2023 respectively.

As I said in How Brexit has Changed IP Law on 17 Jan 2022, the European Union (Withdrawal) Act 1988 incorporated  Council regulations and general principles of European law into the laws of England and Wales, Scotland and Northern Ireland at 23|:00 from 31 Dec 2020 when EU law ceased to apply directly to the UK.  The incorporated principles entrenched EU legislation and judgments of the Court of Justice of the European Union into domestic law necessitating special procedures to depart from them.  REUL abolishes the entrenched status of retained EU Law and much of the implementing legislation.

Clause 1 (1) of the Bill, as introduced, would have revoked all "EU-derived subordinate legislation" and "retained direct EU legislation" on 31 Dec 2023.  "EU-derived subordinate legislation" was essentially secondary legislation made under s.2 (2) of, the European Communities Act 1972.  S.1 (1) of the Act limits the revocation to the legislation listed in Sched 1 of the Acr. Part 1 of that schedule lists subordinate legislation and Part 2 retained direct EU legislation.

In Retained EU law for intellectual property, the Intellectual Property Office has listed legislation which is to be revoked  at the end of this year:

• The Artist’s Resale Right (Amendment) Regulations 2009 (SI 2009/2792) 
• The Community Designs (Fees) Rules 2002 (SI 2002/2942) 
• Council Decision of 22 December 1994 on the extension of the legal protection of topographies of semiconductor products to persons from a Member of the World Trade Organization (94/824/EC) 
• Commission Regulation (EC) No 2245/2002 of 21 October 2002, and  
• Regulation (EU) No 386/2012 of 19 April 2012.

The following statutory instruments will take effect from 1 Jan 2024:

• The Design Right, Artist’s Resale Right and Copyright (Amendment) Regulations 2023 and
• The Intellectual Property (Exhaustion of Rights) (Amendment) Regulations 2023.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.

REUL Bill Second Update

Author Punch Source Wikimedia Commons

 

Jane Lambert

I have already discussed this bill in Retained EU Law (Revocation and Reform) Bill on 26 Oct 2022 and REUL Bill First Update on 6 Dec 2022,  It has now completed its passage through the House of Commons and will proceed to the House of Lords tomorrow.  The latest version of the bill can be read here.

Ahead of its second reading in the Lords, the Secondary Legislation Scrutiny Committee, which considers the policy effects of statutory instruments and other types of secondary legislation, has published Losing Control?: The Implications for Parliament of the retained EU Law (Revocation and Reform) Bill.  The members of the Committee (Baroness Bakewell of Hardington Mandeville, The Earl of Lindsay, Lord De Mauley, Lord Lisvane, Lord German, Lord Powell of Bayswater, Viscount Hanworth, Lord Rowlands. Lord Hodgson of Astley Abbotts, Baroness Watkins of Tavistock and Lord Hutton of Furness) have done so because they believe that the proposed legislation is an extreme example of a skeleton bill which would lead to a significant shift of power from Parliament to ministers.  

As their mandate is to scrutinize secondary legislation it is unusual for the Committee to report on primary legislation.  They explain that they have taken that exceptional step because they have power to consider “general matters relating to the effective scrutiny of secondary legislation” which this bill is likely to affect.

Their concern with the sunset clauses is that important legislation may disappear inadvertently from the statute book. They fear that ministers and their officials may simply overlook important provisions.  They add that there is no machinery for MPs to intervene on behalf of concerned constituents.  As to the proposed power of ministers to amend EU regulations and directives by statutory instrument, they call for an amendment of the bill to enable Parliament as a whole to amend important legislative instruments.  They call for explanatory memoranda to be produced on every piece of legislation likely to lapse or be modified.

The Bar Council, which had previously briefed peers on the bill, welcomes the Committee's report. In his press release Retained EU Law Bill will damage UK’s reputation, says Bar Council of 3 Feb 2023  the Chair of the Bar warned that "the bill in its present form, will damage the UK’s reputation for regulatory stability, predictability, and competence on which growth-promoting investment in critical sectors of our economy depends."

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

REUL Bill First Update

Intellectual Property Office

Crown Copyrights  Open Government Licence

 

Jane Lambert

In Retained EU Law (Revocation and Reform) Bill (26 Oct 2022), I mentioned the introduction and second reading of that bill.  In that article, I wrote that the purpose of the bill s to enable the government to remove the special features of retained European Union law ("REUL") from the English and Welsh, Scottish and Northern Irish legal systems by the end of 2023.  I added that the bill if passed was likely to affect intellectual property law in the United Kingdom because much of that law implements EU legislation and case law.  For that reason, I offered to follow the progress of the bill and its application to intellectual property law.

According to the UK Parliament's website, the bill has completed the report stage and is now at the report stage.  A copy of the bill as amended in committee can be found here.   Anyone interested in what was said in Parliament about the bill can consult Hansard here.

On 29 Nov 2022, the Intellectual Property Office published updated guidance on the bill.   It consists of a list of retained EU law, as defined in s. 6 (7) of the European Union (Withdrawal) Act 2018.  Such law relates to intellectual property within the policy remit of the IPO and does not address issues that lie outside such as plant varieties or rights arising at common law.  The list covers copyrights, designs, patents, trade marks and enforcement.  Readers will see that it is quite long enough.

I shall continue to monitor the progress of the bill and report any other useful materials on the topic that come to my attention.  In the meantime, anyone who is interested in the topic may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Protecting Intellectual Assets Abroad

World Intellectual Property Organization ("WIPO") Geneva

Author Emmanuel Berrod  Licence CC BY-SA 4.0  Source  flicker

 

Jane Lambert

Whenever an inventor applies for a British patent, he or she makes a bargain with the British public.  In return for disclosing "the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art" the inventor is granted a monopoly of the the invention  in the United Kingdom for up to 20 years.   Folks outside the United Kingdom are not privy to that agreement so unless the inventor applies for patents elsewhere, there is nothing to stop a competitor from making, selling  or using the invention overseas.

As other countries' patent laws require the invention to be new at the time of the application, inventors had to apply for patents simultaneously to the intellectual property offices of all the countries in which they sought patent protection.  As can be imagined, that could be expensive and complicated.  The financial and administrative burden was mitigated by the Paris Convention for the Protection of Industrial Property which allowed applicants to backdate their applications to the date of their first application provided they filed their second and subsequent applications within a year of the first application.  That is known as a "right of priority" which is granted by art 4 of the Convention.

Having 12 months in which to file foreign patent applications certainly made life easier for applicants but they still had to make separate applications to each intellectual property office.  On 17 Oct 1977, the European Patent Convention ("EPC") came into force.   The EPC established the European Patent Office ("EPO") which grants patents known as "European patents" for the territories of the governments that are party to that Convention.   Despite their name, European patents are not patents for the whole continent or even the European Union.  They are granted for designated contracting states 

on behalf of the governments of those states.  A European patent designating the UK is known as a European patent (UK) and is treated for almost all practical purposes as if it had been granted by the Intellectual Property Office.in Newport.  The great advantage of applying to the EPO is that applications can be made simultaneously for European patents for up to 39 states from a single filing.  

On 1 June 1978, the Patent Cooperation Treaty ("PCT") came into force.   That Treaty enables patent applications to be made simultaneously to up to 156  states from a single filing.   Applications can be made directly or indirectly to the World Intellectual Property Organization ("WIPO") which is the UN specialist agency for intellectual property.  If requested, the WIPO will carry out an international preliminary examination which will examine the invention for novelty, inventiveness and utility.  If the examination is favourable the applicant can ask for the application to be forwarded to the national intellectual property offices for further consideration.   More information on the EPO and PCT is offered by the IPO in Protecting Your Patent Abroad which was last updated on 1 July 2022.

Art 4 of the Paris Convention confers a 6-month right of priority from the date of the first application upon applicants for trade marks and registered designs.  While the UK was in the European Union, applicants had the choice of applying to national intellectual property offices for the registration of national trade marks or designs or to the European Union Intellectual Property Office ("EUIPO") for the registration of European Union trade marks or registered Community designs which applied to the UK and the other 27 member states of the EU. Since 31 Dec 2020 EU trade marks and registered Community designs have continued to apply to the remaining 27 member states but not here.  Accordingly, UK brand or design owners can still apply to the EUIPO for new EU trade mark or RCD registrations.

Just as the PCT enables applications to be made for patents in many countries from a single filing the Madrid Protocol facilitates multiple trade mark applications from a single filing.   Updated guidance on applications for EU trade marks and the Madrid Protocol is provided by the IPO in Protecting your trade mark abroad.  Similarly, the Hague Agreement permits multiple design registration applications from a single filing.   Details on applications for registered Community designs and under the Hague Agreement are available from the IPO in Protecting your Design Abroad.

Owners of UK copyrights will acquire automatically corresponding local copyrights in countries that are party to the Berne Convention for the Protection of Literary and Artistic Works.  Similarly, owners of rights in performances in the UK will acquire automatically local corresponding rights in countries that are party to the Rome Convention (International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations).   Guidance from the IPO is in Protecting your Copyright Abroad.  

There is no equivalent to unregistered design right in most countries.  In some, however.  designs that are protected by unregistered design rights in the UK may be registered as utility models which are unknown in this country.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form. at any other time.

How Brexit has changed IP Law

 

EU Intellectual Property Office, Alicante

Author Kristof Roomp Licence CC BY 2.0

Jane Lambert

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")

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 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 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

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.

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 UK 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.

Databases:  No new legislation was required to preserve The Copyright and Rights in Databases Regulations 1997 (SI 1997 No 3032) in accordance with art 58 of the withdrawal agreement, but that statutory instrument has been amended by reg 28 of The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019.

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.

Geographical Indications:  Art 54 (2) of the withdrawal agreement requires the UK to continue to protect protected designations of origin, protected geographical indications and traditional specialities guaranteed which are protected throughout the EU by Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ L 343, 14.12.2012, p. 1–29).  That requirement is implemented by The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2019 (SI 2009 No 1366).  The regulations amend Regulation 1151/2012.  I discussed the UK scheme in Geographical Indications in the UK after 31 Dec 2020 in NIPC Law on 30 Sept 2020 and in The New Protected Food Names Scheme as it will apply in Wales on 26 Oct 2020 in NIPC Wales.

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.

The Intellectual Property Office's news story Intellectual property after 1 January 2021 summarize the changes brought about by this legislation.

Unitary Patent and Unified Patent Court

No provision was made for the unitary patent or the Unified Patent Court in the withdrawal agreement even though such a patent and court had been longstanding objectives of British diplomacy and London was to have hosted part of the Central Division of the Court of First Instance and had fitted out the accommodation for such a court at some expenses. For several years after the referendum, the government argued that it should be possible for the UK to participate in the project as the Unified Patent Court Agreement was an international treaty outside the scope of the European Union.   Mr Boris Johnson MP in his role as Foreign Secretary actually deposited an instrument of ratification of the Agreement on 26 April 2018 (see British Ratification of the UPC Agreement - Possibly the best thing to happen on World Intellectual Property Day  26 April 2018 NIPC News).  Less than 2 years afterwards the government changed its mind and withdrew from the project on 20 July 2020 (see Volte Face on the Unified Patent Court 29 Feb 2020 NIPC News and Unified Patent Court Ratification Bill clears Lower House of the German Federal Parliament  30 Nov 2020).

Trade and Cooperation Agreement

On 24 Dec 2020, negotiators for the European Commission and the British government concluded a Trade and Cooperation Agreement to govern the UK's future relationship with the EU.  The Agreement was ratified by the European Union (Future Relationship) Act 2020 on 30 Dec 2020.   Title V of Part Two of the Trade and Cooperation Agreement contained a large number of provisions relating to IP which I discussed in The IP Provisions of the EU-UK Trade and Cooperation Agreement on 30 Dec 2020.  However, none of those provisions appears to require implementing legislation for the time being and there was no mention of intellectual property in the Future Relationship Act.

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.

The Draft EU-UK Trade and Cooperation Agreement: What We Know So Far

Jane Lambert

The European Commission has just published the full text of the draft EU-UK Trade and Cooperation Agreement on its website.  Accompanying that draft are a draft EU-UK Security of Information Agreement, a draft EU-UK Civil Nuclear Agreement and draft EU-UK Declarations. Also worth reading are the Commission's press release of 24 Dec 2020, a Q & A on the draft agreement and a checklist entitled Big changes compared to benefits of EU membership which can be downloaded here.  On Christmas Day, the British government published a 34-page summary of the agreement and a statement from the Prime Minister.

.To understand the agreement it is necessary to refer to art 50 (2) of the Treaty of European Union:

"A Member State which decides to withdraw shall notify the European Council of its intention. In the light of the guidelines provided by the European Council, the Union shall negotiate and conclude an agreement with that State, setting out the arrangements for its withdrawal, taking account of the framework for its future relationship with the Union."

The agreement that set out the arrangements for withdrawal was, of course, the Withdrawal Agreement (Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community). It was concluded in January and implemented by the European Union (Withdrawal Agreement) Act 2020. 

Some of the provisions of the Withdrawal Agreement such as those governing the transitional or implementation period in which EU law continues to apply to the UK will lapse at 23:00 on 31 Dec 2020.  Other provisions such as those governing intellectual property or Northern Ireland will continue indefinitely.  The framework for the UK's future relationship with the EU was the Political Declaration setting out the framework for the future relationship between the European Union and theUnited Kingdom ("the Political Declaration"). The EU-UK Trade and Cooperation Agreement is intended to govern the UK's relationship with the EU from the end of the implementation period at 23:00 on 31 Dec 2020 in accordance with the Political Declaration.

The draft trade and cooperation agreement is 1,246 pages long and consists of the body and a very large number of annexes.   The body is just under 400 pages long and is divided into 7 Parts subdivided into Titles and in some cases further divided into chapters.  The remaining pages are the annexes.

The structure of the body is as follows:

• Part One: common and institutional provisions in the Agreement; 
• Part Two: trade and other economic aspects of the relationship, such as aviation, energy, road transport, and social security; 
• Part Three: cooperation on law enforcement and criminal justice; 
• Part Four:  thematic issues, notably health collaboration; 
• Part Five: participation in EU Programmes,
• Part Six: dispute settlement; 
• Part Seven: final provisions.

The most important economic provisions appear to be in Part Two. Title 1 of Part 2 covers trade in goods and Title II trade in services.  Services that are covered in this title include telecoms, financial services and legal services.  Provision is also made in Part Two for digital trade, capital m movements and intellectual property.

Because of the sheer length of the document, it will take me some time to read and digest it.  Anyone wishing to discuss this article or brexit generally may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.  I take this opportunity of wishing all my readers a happy New Year.

An Introduction to and Overview of the Comprehensive Economic Partnership Agreement with Japan

Source Independent  Licence Standard YouTube Licence

Jane Lambert

On 23 Oct 2020, the Secretary of State for International Trade signed an Agreement between the United Kingdom of Great Britain and Northern Ireland and Japan for a Comprehensive Economic Partnership in Tokyo.  The body of the agreement is 406 pages long divided into 24 chapters together with 3 volumes of annexes which can be accessed from UK/Japan: Agreement for a Comprehensive Economic Partnership [CS Japan No.1/2020].

The structure of that agreement is very similar to the EU-Japan Economic Partnership Agreement:

EU-Japan Economic Partnership Agreement	UK-Japan Comprehensive Economic Partnership Agreement
Chapter 1    General provisions	Chapter 1   General provisions
Chapter 2    Trade in goods	Chapter 2 Trade In goods
Chapter 3    Rules of origin and origin procedures	Chapter 3 Rules of origin and origin procedures
Chapter 4    Customs matters and trade facilitation	Chapter 4 Customs matters and trade facilitation
Chapter 5    Trade remedies	Chapter 5 Trade remedies
Chapter 6    Sanitary and phytosanitary measures	Chapter 6 Sanitary and phytosanitary measures
Chapter 7    Technical barriers to trade	Chapter 7 Technical barriers to trade
Chapter 8    Trade in services, investment liberalisation and electronic commerce	Chapter 8 Trade in services, investment liberalisation and electronic commerce
Chapter 9    Capital movements, payments and transfers and temporary safeguard measures	Chapter 9 Capital movements, payments and transfers and temporary safeguard measures
Chapter 10  Government procurement	Chapter 10 Government procurement
Chapter 11  Competition policy	Chapter 11 Competition policy
Chapter 12  Subsidies	Chapter 12 Subsidies
Chapter 13  State-owned enterprises, enterprises granted special rights or privileges and designated monopolies	Chapter 13 State-owned enterprises, enterprises granted special rights or privileges and designated monopolies
Chapter 14  Intellectual property	Chapter 14 Intellectual property
Chapter 15  Corporate governance	Chapter 15 Corporate governance
Chapter 16  Trade and sustainable development	Chapter 16 Trade and sustainable development
Chapter 17  Transparency	Chapter 17 Transparency
Chapter 18  Good regulatory practices and regulatory cooperation	Chapter 18 Good regulatory practices and regulatory cooperation
Chapter 19  Cooperation in the field of agriculture	Chapter 19 Cooperation in the field of agriculture
Chapter 20  Small and medium-sized enterprises	Chapter 20 Small and medium-sized enterprises

Chapter 21  Dispute settlement	Chapter 21 Trade and women's economic empowerment
Chapter 22  Institutional provisions	Chapter 22 Dispute settlement
Chapter 23  Final provisions	Chapter 23 Institutional provisions
	Chapter 24 Final provisions

The only difference in structure appears to be the insertion of a chapter on  "Trade and women's economic empowerment" in the UK's agreement with Japan.  The only chapters of either agreement that I have read in full are Chapters 14 of the EU and British agreements which cover intellectual property.  I shall write a separate article on the IP provisions of the UK-Japan agreement shortly.   

According to the British government, the UK-Japan agreement is not an exact copy of the EU-Japan agreement,  There are said to be some provisions in the UK-Japan agreement that have been tailored to British needs.  These may have been identified in the Final Impact Assessment of the Agreement between the United Kingdom of Great Britain and NorthernIreland and Japan for a Comprehensive Economic Partnership and The UK–Japan Comprehensive Economic Partnership Benefits for the UK.   For an independent view of the agreement from an international trade policy consultant and fellow of the UK Trade Policy Observatory, see Minako Morita-Jaeger  UK-Japan trade deal will provide political cover - but only a limited trade boost of 27 Oct 2020 on the politics.co.uk website.

Anyone wishing to discuss this article or any of its contents should call me on 020 7404 5252 during office hours or send me a message through my contact form.