Intellectual Property in St Helena

This image was taken by the NASA Expedition 19 crew. - NASA Earth Observatory, Public Domain,
https://commons.wikimedia.org/w/index.php?curid=7030157

Jane Lambert
 

I have recently come across St. Helena Coffee.  It is very rare and very expensive because it is cultivated in modest quantities on a tiny island in the South Atlantic and has very special qualities.  When I first learned of the product, its geographical indication seemed an obvious candidate for legal protection.  When I tried to check it out, I could find no registration under either the UK's protected food names scheme or as a collective or certification mark under s.49  or s.50,  The only registration that I have been able to find is THE ISLAND OF ST HELENA COFFEE COMPANY for goods in classes 16 and 30 by David Henry under trade mark number UK00002192111.

I also found several other products whose geographical indications might benefit from legal protection.  These include rock lobster, tuna, honey and various liqueurs made from local coffee, prickly pears and rum.  St Helena’s Sustainable Economic Development Plan 2018 - 2028 published by the territory's government mentions viticulture on page 26.

Other projects in the plan include opening satellite ground stations and call centres,  encouraging software development and maintenance services, hosting academic research and letting out its locations for filming and programme making.  All those initiatives will require robust copyright, database right and trade secrecy laws.

There is no intellectual property office on St Helena but the territory's legislature has passed legislation to extend United Kingdom patents, trade marks and designs to the island.   S.2 (1) of the Patents (Registration) Ordinance 1927 entitles any grantee of a patent in the United Kingdom or any person deriving a right from such grantee by assignment, transmission or other operation of law may apply within 3 years from the date of issue of the patent to have the patent registered in St Helena.   Upon receiving such an application together with two certified copies of the specification and certificate of grant the registrar must issue a certificate of registration. The certificate of registration confers on the applicant privileges and rights, subject to any conditions established by the law of St Helena, as though the patent had been issued in the United Kingdom with an extension to St Helena.   S.3 and s.6 of the Trade Marks (Registration) Ordinance, 1949 make similar provision for trade marks.  S.2 of the United Kingdom Designs (Protection) Ordinance, 1930 confers upon the registered proprietor of any design registered in the United Kingdom under the Registered Designs Act, 1949 the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to St. Helena.  

S.3 of the United Kingdom (Design) Ordinance, which restricts recovery of damages where a defendant was unaware of the registration of a design, is a little anomalous in that it refers to "copyright in a design" despite the extensive amendments to the statute by the Copyright, Designs and Patents Act 2025 and the Registered Designs Regulations 2001.  The intention of the legislature appears to be clear but I have not yet found a case on the point.

I have been unable to find any copyright, rights in performances, unregistered design right or trade secrets ordinance but s.3 (1) of the English Law (Applications) Ordinance 2005  applies Adopted English Law to St Helena.  "Adopted English Law is defined as:

"(a) the common law of England, including the rules of equity; and 

(b) the Acts of Parliament which are in force in England at the time of commencement of this Ordinance."

This is qualified by s.3 (2) which provides that the Adopted English Law applies to St Helena only in so far as it is applicable and suitable to local circumstances, and subject to such modifications, adaptations, qualifications and exceptions as local circumstances render necessary.  S.4 (1) further provides that The Adopted English Law applies to St Helena only insofar as it is not inconsistent with— 

"(a) any enactment of the Parliament of the United Kingdom which extends to St Helena otherwise than by virtue of this Ordinance; 4 

(b) any Order of Her Majesty in Council which extends to St Helena otherwise than by virtue of this Ordinance; 5 or 

(c) any provision made by or under any law enacted by a legislature in St Helena." 

Some UK statutes, such as the Freedom of Information Act 2000 and the Human Rights Act 1998, have been disapplied from St. Helena.   However, I have found no disapplication of the Copyright, Designs and Patents Act 1988 or the law of confidence.   S.8 of the Trade Marks (Registration) Ordinance 1949 specifically preserves the action for passing off.

Actions for the infringement or revocation of intellectual property rights are brought in the Supreme Court of St Helena.   Appeals lie to the Court of Appeal and thence to the Privy Council

Belinda Piek is the Registrar of Patents and Trade Marks in St. Helena.  There do not appear to be any patent or trade mark attorneys on St Helena.  Indeed, there seem to be no solicitors in private practice on the island.  Legal services are supplied to the public by the Public Solicitor.  Neither the Public Solicitor nor any of his staff claims expertise in intellectual property.

As the population of the island has been in decline for many years and has only recently flattened out to 4,439 according to the latest census, readers may well ask themselves why I have spent time on researching its intellectual property laws.  The answer is that St Helena’s Sustainable Economic Development Plan 2018 - 2028 contains many reasonable proposals for the economic development of the territory but does not mention intellectual property.   On page 45, there is a non-exhaustive list of opportunities for entrepreneurs.  Entrepreneurs will respond only if their intellectual assets are protected sufficiently to ensure a reasonable return.  Such assets must be protected not only in St Helena but also in the United Kingdom and their other markets around the world.   

The UK and St Helena governments have already shown their commitment to St. Helena by investing some £285.5 million in the construction of a new airport. They had hoped it would increase tourist traffic from a few hundred a year to over 30,000.   Since there are only weekly flights to South Africa, that is unlikely to happen.  However, if the airport could be used to export the island's coffee and other premium beverages and foodstuffs to affluent consumers around the world and remain the port of entry for satellite tracking engineers, film and TV programme makers and actors, conference attendees and others, it could easily justify that investment.

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

Further Information

Smudge Dog Media: The Challenges of St Helena's Entrepreneurs YouTube 

Economic Prosperity Deal with the USA

Author Carol M. Highsmith Licence: Public Domain Source Wikimedia Commons 

 

Jane Lambert

One of the arguments in favour of Brexit before the 2016 referendum was that it would enable the UK to join the North American Free Trade Agreement ("NAFTA") or some other free trade agreement with the USA.  Donald Trump terminated NAFTA in his first presidency but he replaced it with the United States-Mexico-Canada Agreement ("USMCA").  He has now finished USMCA by imposing punitive tariffs on Canadian and Mexican imports and talking about annexing Canada.

Negotiations between HMG and the US government on a possible trade deal started during Mr Trump in his first term and continued during the Biden administration.  On 8 May 2025, the two governments announced the General Terms for the US and UK economic prosperity deal.  This is not a comprehensive free trade agreement.   The document is only 5 pages long and covers tariffs, non-tariff barriers, digital trade, alignment and collaboration on economic security, commercial considerations and opportunities and other matters.  There is no provision for dispute resolution, and the only mention of intellectual property is confirmation in para 6 that both governments intend to discuss high-standard commitments related to intellectual property rights protection and enforcement.

An update was published by Mr Trump and Sir Kier Starmer on progress towards the implementation of the agreement on the first day of the G7 summit on 16 Jun 2025.   I will monitor and report on progress in this publication.

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

IP Provisions of the UK's Free Trade Agreement with India

Science City, Kolkata

Author: Biswarup Ganguly Licence CC BY-SA 3.0  Source Wikimedia Commons

 

Jane Lambert

By a press release dated 6 May 2025, the Department for Business and Trade announced that the United Kingdom had concluded a trade deal with India.  According to Dominic Webb's UK India Free Trade Agreement, a research briefing for the House of Commons Library dated 9 May 2025, no details are available, but the deal seems to consist of a free trade agreement and a double contributions convention.  The research paper refers to UK and India clinch trade deal after three years of talks in Politico, which states that negotiations for a bilateral investment treaty are continuing.

The Free Trade Agreement

The Department for Business and Trade published a chapter summary on the issues that had been agreed in its policy paper, UK-India trade deal: conclusion summary, on 15 April 2025.  Work is continuing on the legal text and the resolution of a few remaining issues. Once the text has been finalized, it will be checked by both sides' lawyers.  Domestic approval will then be sought in each country.  Once that has been obtained, the agreement can be signed, after which it will enter into force.

The agreement will cover anti-corruption, the temporary movement of natural persons, competition and consumer protection, customs and trade facilitation, trade and development cooperation, digital trade, the environment, financial services, goods market access, good regulatory practice, government procurement, innovation, intellectual property, labour, professional business services, rules of origin, remedies, sanitary and phytosanitary, small and medium enterprises, state owned enterprises, subsidies, technical barriers to trade, telecommunications, trade and gender equality and trade in services.  

Intellectual Property

According to para 4.15 of the policy paper, the IP chapter will support the British and Indian economies "through effective and balanced protection of IP rights.  It will cover copyright and related rights, designs, trade marks, geographical indications, patents, and trade secrets, as well as the enforcement of IP rights, and ongoing cooperation in relation to IP matters.  The chapter will secure improvements to patent procedures in India to reduce the administrative burden, speed up processes, and lock in commitments that provide for transparency and legal certainty in the patent system.  India will commit to engaging on aspects of copyright and related rights, including public performances, artists' resale rights and the copyright terms of protection.  UK food and other suppliers will be able to seek protection for all geographical indications and not just wines and spirits in India. Nothing in the outline agreement will commit the UK to domestic legislative change, undermine the UK’s IP system or its international positions on IP.  There is likely to be a degree of overlap between IP and some of the other agreed issues, such as competition and consumer protection, digital trade, financial services, innovation, small and medium enterprises, technical barriers to trade and telecommunications. 

Existing IP Protection in India

According to the WIPO, India ranked 39 among the 133 countries in the global innovation index in 2024.  The main IP statutes appear to be The Copyright Act, 1957, The Designs Act, 2000, The Geographical Indications of Goods (Registration and Protection) Act, 1999, The Patents Act, 1970, The Protection of Plant Varieties and Farmers' Rights Act, 2001, The Semiconductor Integrated Circuits Layout-Design Act, 2000 and The Trade Marks Act, 1999,  India is party to the main intellectual property treaties including Paris, Berne and Rome Conventions, the Patent Cooperation Treaty and the Madrid Protocol (see WIPO-Administered Treaties, Contracting Parties/Signatories India).

Comment

This is the UK's 4th new trade agreement since it left the European Union and potentially the most important.   I shall return to the topic as more information becomes available.  Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5252 during normal UK business hours or send me a message through my contact form at any time.

UK Joins the CPTPP

Author L.Tak Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

On Sunday 15 Dec 2024, the United Kingdom became the 12th member of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership ("the CPTPP").  The others are Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore and Vietnam.  According to a press release from The Rt Hon Jonathan Reynolds MP and the Department for Business and Trade dated 15 Dec 2024, the combined GDP of those member states amounts to £12 trillion.  HMG states that British membership "creates opportunities for businesses, potentially boosting the economy by £2 billion a year in the long run."

I first mentioned the application to join the CPTPP in my Brexit Briefing for June 2020 on 4 July 2020 and followed the negotiations on the CPTPP page of this website. In Change of Focus, I wrote on 23 Sept 2021, I wrote:

"While bilateral treaties such as the Comprehensive Economic Partnership Agreement with Japan and the proposed Australia-UK Free Trade Agreement contain provisions on intellectual property, it is unlikely that any of them will require amending legislation. What might are the intellectual property provisions of the Trans-Pacific Partnership which are incorporated by reference into the Comprehensive and Progressive Agreement for the Trans-Pacific Partnership and Chapter 20 of the Agreement between the United States of America, the United Mexican States, and Canada, the successor to the North American Free Trade Agreement."

I also noted in British Intellectual Asset Owners' Rights after Brexit: IP Provisions of Bilateral Investment Treaties and Free Trade Agreements on 17 Aug 2020 that

"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."

The full text of the Agreement can be found on the website of the New Zealand Ministry of Foreign Affairs and Trade. The provisions on intellectual property are in Chapter 18.  Those on dispute settlement are in Chapter 28.  Those on investor protection against expropriation are in Chapter 9. I shall return to this topic as and when issues relating to our membership arise.  Two potential developments are the applications for membership by China and Ukraine.

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

Estonia

Tallinn Old Town

(c) 2024 Jane Lambert: all rights reserved

 

Jane Lambert

Last week I visited Estonia and was immediately reminded of Wales.  It is another small country on the Western seaboard of the landmass of which it forms part.  It has a larger territory but a much smaller population than Wales.  Although almost everyone speaks fluent English and many Estonians also speak Russian, the country has its own euphonic language the use of which was discouraged for much of its history   Like Wales, Estonia has a strong choral tradition.  The events by which Estonia regained  its independence are called "the Singing Revolution." 

Estonia has been very successful in establishing and growing new businesses. Examples of Estonian companies that have become household names are Skype, Bolt and Starship Technologies.  Although I had come to Estonia primarily to watch ballet I was also on the lookout for pointers to Estonia's success.  In this article, I have gathered information and pointed to resources that might be of use to UK entrepreneurs.  I will leave it to readers to consider whether Estonia has any lessons for the UK or for any of its nations and regions.

Many of Estonia's new businesses are in such activities as software development, fintech, electronics and robotics.   Those activities require a highly developed digital infrastructure.  In an article for Wired dated 28 Oct 2016, Matt Reynolds described Estonia as "the world's most digitally advanced society." It launched the first 5G mobile network in 2020 and offers very fast broadband to homes and businesses throughout the country.  Those activities also require a highly educated workforce and perhaps another reason for Estonia's success is that it scores high marks consistently in the OECD's PISA (Programme for International Student Assessment) (see PISA 2022 results: Estonia’s education is the best in Europe  Invesr Estonia.  

Estonia is party to the European Patent Convention and has its own Patents Act which was enacted in 1994.  It is also party to the Paris Convention, Patent Cooperation Treaty, the Patent Law Treaty and TRIPs.  Estonia also protects inventions as unitiltu models under the Utilities Models Act 1994.  Other intellectual property statutes to be noted are the Trade Marks Act 2002, the Industrial Design Protection Act 1997, the Layout-Designs of Integrated Circuits Protection Act 1998 and the Copyright Act 1992 which also protects rights in performances and database rights,  Estonia has acceded to the Berne and Rome Conventions, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.  Geographical indications are protected by Regulation 2019/787 and Regulation 2024/1143.

The Estonian Patent Office at Tatari 39 in Tallinn keeps comprehensive databases of inventions, trade marks, industrial designs and geographical indications.  It also keeps a list of patent attorneys.  A service that sounds as though it would be very useful to startup founders and other small business owners is pro bono advice on patent and utility model applications by patent examiners between 15:00 and 17:00 on Tuesdays (see "Free Consultations" on the Patent Office website. 

Precedents for establishing, investing in and advising new businesses are available from the Startup Estonia page.  These include agreements for assigning and licensing intellectual property rights which I have reviewed and believe to be sound.   Non-residents of Estonia who want to incorporate and run a company in that country remotely can apply for a status called e-residency,  Successful applicants receive a digital identity which enables them to access many government and private services that would otherwise be reserved for Estonian nationals and permanent residents.

Estonia is a civil law country.  The court system is divided into civil and administrative law branches.  Civil courts determine commercial disputes in accordance with The Estonian Commercial Code.  The County Court is the court of first instance for all matters including intellectual property disputes.  According to Taylor/Wessing's Patent Map Estonia does not have a specialist patents court though, as I mention below, there is at least one County Court judge with patents expertise.  Typical costs of a patent trial where infringement and validity are an issue are €25,000 to €45,000,  Appeal lies to the Circuit Courts and ultimately the Supreme Court which is also a court of cassation.

Estonia has ratified the Unified Patent Court Agreement and has adapted the unitary patent (see the UPC Member States Map on the Unified Patent Court website).   Estonia falls within the Nordic-Baltic Regional Division of the Court of First Instance which also includes Sweden, Latvia and Lithuania.  Kai Härmand who is also a member of the Estonian judiciary sits in that Regional Division.  One of the hearing centres of the Nordic-Baltic Regional Division is in Tallinn at Lubja 4.

As far as I could judge prices in Estonia seem to be about the same as in the United Kingdom although hotels and restaurants in the old town can be expensive.  A good tip from a dancer friend is to eat in the food court of the Solaris shopping centre which is just across the road from the Estonian National Opera House.  That is where the locals eat.   I bought a very nourishing meal of chicken, chips and sparkling mineral water at The Lido for €6.80  before watching my friend dance in Cinderella.   I would never get away with that in Covent Garden.

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

Innovation & Patents In the United Kingdom

United Nations Offices in Geneva

Author Tom Page Licence CC BY 2.0 Source Wikimedia Commons

Jane Lambert

The Chartered Institute of Patent Attorneys has recently published a 10-page paper entitled Innovation & Patents In the United Kingdom.  In it, the Institute notes that British businesses are falling behind their European competitors in the international patent protection of their technology and proposes a number of remedies including supporting the Society for Chemical Industry's proposal for a Science and Innovation Growth Council to "ensure science industrialisation is at the heart of government policy."

As I said in my opening remarks to the attendees of the Cambridge IP Law Summer School at the start of the session on patents on 13 Aug 2024, a patent confers a monopoly which automatically excludes competing products or processes from the market of the country for which it is granted for so long as the patent remains in force.  It follows that the patent confers a competitive advantage upon the patentee.  Of course, patents have to be obtained for a purpose.  There is no point in acquiring them for their own sake.  But where they implement a business's objective they are a good thing.

I have always regarded it as concerning that European patent applications from the UK have consistently trailed not just the USA and Japan or even countries of approximately the same size such as Germany and France but also the Netherlands with a third of this country's population or Switzerland with one eighth.  As long ago as 10 Sept 2008 I drew up the following table which I inserted in the first blog post of NIPC Yorkshire:

European Patent Applications since 2002

Country	2007	2006	2005	2004	2003	2002
USA	35 588	34 794	32 738	32 625	31 863	30 118
Germany	25 176	24 806	23 789	23 044	22 701	21 039
Japan	22 887	22144	21 461	20 584	18 534	15 912
France	8 328	8 051	8 034	8 079	7 431	6 853
Netherlands	6 999	7 360	7 799	6 974	6 459	5 054
Switzerland	5 855	5 503	5 027	4 663	4 180	3 882
UK	4 979	4 722	4 649	4 791	4 843	4 709
South Korea	4 934	4 595	3 853	2 871	2 075	1 408

(Source Jane Lambert (c) 2008 compiled from annual "Facts and Figures" published by the European Patent Office)

In my article, I wrote:

"The reason for our lacklustre performance is that start-ups and other small businesses, that are the mainspring of innovation in the UK as in most of our competitors, make much less use of the intellectual property system than their equivalents in other countries and, indeed, much less use than multinational enterprises and other big businesses here."

The CIPA seems to have arrived at a similar conclusion because the last section of their paper is headed "Support for Innovative SMEs".

I diagnosed the problem as follows:

"There are two reasons why small businesses eschew the intellectual property system. One is that the cost of obtaining and enforcing legal protection for investment in brands, design, technology and the creative works is prohibitive and the other is that the intellectual property services available to small businesses, particularly outside London, is patchy in quality and, when compared to the unit costs that major companies pay, relatively expensive.
As for cost, research commissioned by the European Patent Office reported that it costs over €32,000 to obtain and maintain a typical, European patent on 6 countries over 10 years. But those costs pale into insignificance when compared to the cost of enforcement, particularly in the UK. According to the British government's own (but now disbanded) Intellectual Property Advisory Committee, it can cost over £1 million for an infringement action in the Patents Court and even £150,000 to £250,000 for the Patents County Court compared to no more than €50,000 in France, Germany and the Netherlands (see the table at page 50 of IPAC "The Enforcement of Patent Rights" published on 18 Nov 2003). The other big difference between big and small companies is that the latter know how the IP system works. They have day to day experience of the legal protection that is available in each jurisdiction, which innovation is worth protecting and which is not, the optimum protection for each innovation in each market, which lawyer, patent or trade mark attorney is good for a particular type of work and so on. They can use their considerable purchasing power to secure the services of the best professionals on advantageous terms. By contrast, inventors and small business people resort to the lawyers who drew up their lease and drafted their T & C and employment contracts who are as often as not on an expensive learning curve and who are forced to pass on their cost of learning or perhaps purchasing the expertise of the London patent bar on to their hard pressed clients."

 Despite the Arnold reforms and the shorter trials scheme TaylorWessing's Patent Map indicates that England and Wales is still the most expensive jurisdiction in Europe to bring or defend an intellectual property infringement action.

Sixteen years ago I wrote that there may not be much one can do about the imbalance of resources between big and small companies but there is a lot that can be done about the learning curve.   My solution was to educate SMEs.   I wrote:

"Inverting the famous conversation between F Scott Fitzgerald and Ernest Hemingway, SMEs are different from other IP users. They have much less money and the little they have has to be husbanded widely. Wise husbandry requires very special skills and those skills are not easy to identify."

To pass on those skills I set up IP Yorkshire on Linkedin which continues to this day:

"To assist businesses to identify high quality advisors NIPC has established a panel of trusted professional advisors who possess those skills and share our mission of bringing high quality professional services within reach of those who need them most but can often afford them least. They include patent and trade mark agents like Janet Bray, Carin Burchell and Barbara Cookson, specialist IP solicitors like Kate Reid of Pemberton Reid and James Love, company and commercial experts like Jane Sachedina and Umberto Vietri and experts in many other fields such as Richard Hall in product design and development, Gareth Morgan in marketing, forensic accountant, Michael Swift and many, many, more. These are some of the experts to whom we refer clients when we are asked to recommend solicitors, patent agents or other professionals. We do that safe in the knowledge that each of those professionals knows his or her job, each of them cares about our clients just as much as we do and each of them will give our clients that professional's best deal."

The CIPA has also concluded that the answer lies in education and they offer to provide it:

"We think that CIPA can bridge this gap because it is our members that are providing the support to practically every British SME that is developing and patenting technology. We want to use our experience of SME technology development and commercialisation to help the government develop innovation policy. We think that our knowledge of the real challenges faced by SMEs commercialising technology can inform practical solutions."

Attorneys are certainly part of the solution but they are not enough by themselves.   They need the skills. experience and knowledge of other professionals such as the group I corralled in this county.   

The only part of the report that I cannot understand is the call for a Science and Innovation Growth Council.  Its functions are not explained and I fear that it would easily degenerate into a quango.  Of course, it has been proposed by the Society of Chemical Industry which is a powerful industrial body and a useful ally. 

I welcome, commend and support the CIPA's initiative though I would take its proposals further.   Anyone wishing to discuss this note may call me on 020 7404 5252 during UK office hours or send me a message through my contact page.

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

Jane Lambert

This post should be read in conjunction with Retained EU Law (Revocation and Reform) Bill, my first, second and third updates on the legislation and How Brexit has changed IP Law.  We are now in the sunset period and the legislation in Schedule 1 of the Rerailed EU (Revocation and Reform) Act 2023 is no longer part of our law.  This repeal is nothing like as extensive as the revocation of all EU-derived subordinate legislation and retained direct EU legislation as originally intended but it is still substantial.  The retained EU law that has not been revoked is now known as "assimilated law" by virtue of s.5 (1) of the Act.  

In Retained EU Law (Revocation and Reform) Bill I warned:

"This bill, if passed, is likely to affect intellectual property law in the United Kingdom because much of that law implements EU legislation and case law."

Because of amendments to the Bill as it passed through Parliament the effect on intellectual property has been much more limited than I had feared.   Of the 86 items of retained EU law that the Intellectual Property Office has identified, only 8 have been included in Schedule 1 of the Act.   These are highlighted in grey in the IPO's guidance Retained EU law for Intellectual Property which it updated on 1 Jan 2024.  In Intellectual property and Retained European Union Law: the facts those instruments were described as "either inoperable, superseded by other domestic legislation or were no longer relevant." The guidance adds that their revocation has not altered the policy effect of IP law.

The legislation in Retained EU law for Intellectual Property that is not highlighted survives as assimilated law.  However, its interpretation is affected by s.3 which abolishes the supremacy of EU law, s.4 which abolishes general principles of EU law and s.6 on the role of the courts.   

Judgments of the Court of Justice of the European Union ("the CJEU") and the General Court before 31 Dec 2020 are now known as "assimilated case law" pursuant to s.5 (1). The Court of Appeal and certain other courts in the UK and its component nations had the power to depart from the judgments of the CJEU and General Court under the European Union (Withdrawal) Act 2018 as amended.   The Court of Appeal's decision in ) Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd and another [2023] EWCA Civ 1451 (6 Dec 2023) which I discussed in Trade Marks - Industrial Cleaning Equipment (Southampton) Ltd. v Intelligent Cleaning Equipment Holdings Co. Ltd. and another on 4 Jan 2024 in NIPC Law is an example of the use of that power.  The 2023 Act should make it easier for the courts of this country to depart from assimilated case law in the future.

This will be the last of my updates on the Retained EU (Revocation and Reform) Act 2023  as the Act is now in force and fully implemented.   Anyone wishing to discuss the legislation can call me on 020 7404 5252 during office hours or send me a message through my contact form. 

Trade and Cooperation Agreement Council

Author David Howard Licence CC BY-SA 2.0 Source Wikimedia Commons

The Foreign and Commonwealth Office at 23:00 on 31 Jan 2020

 

Jane Lambert

Art 7 of the EU-UK Trade and Cooperation Agreement which I outlined in The Draft EU-UK Trade and Cooperation Agreement: What We Know So Far on 26 Dec 2020 established a Partnership Council comprising representatives of the European Union and the United Kingdom to oversee the attainment of the objectives of this Agreement and any supplementing agreement.  That Council held its second meeting on 24 March 2023 the minutes of which were published on 4 July 2023.

The agenda which was adopted by the Council covered energy, regulation, security, Union programmes and any other business. The topic of most interest to readers was regulation because it concerned intellectual property,  the Retained EI Law (Revocation and Reform) Bill and the Bill of Rights Bill. 

On IP,  Commission Vice-President Maroš Šefčovič (Co-chair of the Council) indicated that continued cooperation between the EU and UK Intellectual Property Offices was important.  He said that he was ready to make contact with the EU IPO to encourage it to cooperate with the UK IPO, in line with the current EU IPO’s practice on cooperation with third counties’ offices, which usually takes place on the basis of memoranda of understanding.

The EU delegation which included Commission officials, officials from the European External Action Service and Delegation of the EU to the UK and representatives of the EU member states as well as Mr Šefčovič expressed concerns as regards the UK’s Retained EU Law (REUL) Bill and the Bill of Rights Bill. They feared that the Retained EU Law Bill could undermine the UK's obligations under the Withdrawal and Trade and Cooperation Agreements in that the legislation could lead to significant regulatory divergence. In respect of the Bill of Rights Bill, the EU representatives said that it raised questions for them in relation to the right to an effective remedy and the binding character of the decisions of the European Court of Human Rights in the UK. The EU representatives requested that UK and EU technical experts meet to discuss the REUL Bill further.  The Rt Hon James Cleverly MP, Secretary of State for Foreign, Commonwealth and Development Affairs who led the British delegation tried to reassure the European delegates that the British approach was consistent with its international obligations.  He referred to the UK's high standards across areas such as the environment, workers’ rights, health and safety.

The EU delegation expressed the view that the agreement on the Windsor Framework allowed the parties to deepen cooperation in line with the terms agreed under the Trade and Cooperation Agreement.   UK participation in Horizon Europe, the Euratom Research and Training Programme, Fusion for Energy/ITER, Copernicus and Space Surveillance and Tracking, as of 2023, could now happen swiftly, based on the quick agreement of limited amendments to the draft Protocols. The EU also noted that the UK should not be bound to make financial contributions for 2021 and 2022, ie when it was not associated with those programmes.

The British delegation raised the question of British artists who wished to tour in the EU and vice versa.  They said that they were keen to protect the broader contribution that touring creatives brought to the UK and EU.  The EU delegation replied that this issue had been covered at length in previous occasions. The situation of UK touring artists was the result of the UK leaving the single market, including the free movement of persons, and the customs union.

Although the minutes reveal sharp differences between the parties on such issues as the REUL and Bill of Rights Bills and facilitating touring for British artists the discussions seem to have been a lot less fractious than in previous years.  That is done to the Windsor Framework which Mr  Šefčovič called "a turning point in how both parties work together collaboratively and constructively."

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

How much Work is London losing to Continental English Speaking Commercial Courts?

 

Jane Lambert

In English Speaking Commercial Courts in France, Germany and the Netherlands bid for London's Work which I posted on 4 April 2021, I discussed how the UK's withdrawal from the European Union had been seen as an opportunity for lawyers and judicial authorities in France, the Netherlands and other countries to grab some of London's lucrative, international, commercial litigation work.  The Dutch authorities responded by establishing the Netherlands Commercial Court as an English-speaking commercial in Amsterdam.  In Paris, some of the proceedings before the International Chamber of the Paris Commercial Court and an International Chamber of the Paris Court of Appeal take place in English (see Présentation générale CCIP-CA / The ICCP-CA.  There are also proposals to set up similar English-speaking commercial courts in Belgium, Germany and Switzerland.

This month the Netherlands Commercial Court published a News Update which contained an article entitled Brexit: Europe sees emergence of specialist commercial courts to compete with the UK (Chessa, IBA).  It refers to a short article by Sara Chessa dated 17 March 2023 on the International Bar Association's website. Although the News Update quotes the opinion of Mr Martin Poelman that the Netherlands Commercial Court has very good judges whose judgments are perceived as good and solid and Dries Beljon's view that litigation in that court is quicker and cheaper in that court than elsewhere, Ms Chessa's article does not suggest that the Dutch or French courts are taking much (if any) work away from London.  She notes that between its opening in 2019 and 2022, the Netherlands Commercial Court saw only 16 cases, according to a publication by the Court,   If she was referring to the judgments page of the court's website there have been 16 judgments between opening and 23 April 2023.  Ms Chessa also quotes Nick Vineall KC who denied that London had lost any business at all since Brexit and that if anything the courts and arbitrators are busier than ever.

It is, of course, very early days.   Litigation under the inquisitorial system is obviously cheaper than under a procedure where contestant law firms leave no stone unturned.  Also, exclusion from Lugano will impede the enforcement of judgments of the UK's courts in the EU (see EU Commission rejects the UK's Application to rejoin Lugano 6 May 2021).  As an intellectual property lawyer, I am anxious that the Netherlands Commercial Court is pitching for soft IP work with its factsheet NCC and Intellectual Property.  The court's most recent judgment concerns intellectual property and ownership of data (see Diamedica Therapeutics Inc. v Pharmaceutical Research Associates Group BV NCC 22/018 (C/13/730389) 23 April 2023). From 1 June 2023, the Patents Court and Intellectual Property Enterprise Court face competition from the Unified Patent Court.

Apologists for brexit contend that any loss of business in Europe will be more than made up by increasing business with the rest of the world.  That is yet to be borne out by experience but even if it turns out to be the case for British business as a whole it may not turn out to be so for the legal services sector.   In the EU England and Wales was by far the largest English-speaking common law jurisdiction.   In the wider world, London faces competition from other powerful English-speaking common law courts in the USA, the Commonwealth, the Arabian Gulf and even Kazakhstan.

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 page. 

IP in New Zealand

Author Maungatautari Ecological Island Trust Licence Public Domain

 

Jane Lambert

On 19 Dec 2022, the Intellectual Property Office published Guidance on IP in New Zealand.  The Guidance covers trade marks, patents, designs, copyrights and enforcement.  It has links to the Department for International Trade to report trade barriers and the British New Zealand Business Association for advice on doing business in New Zealand.

The Guidance introduces readers to the Intellectual Property Office of New Zealand ("IPONZ") which registers patents, trade marks, designs, plant varieties and geographical indications.  It also offers guidance on copyrights, trade secrets, domain names and company names.  Applications for NZ patents, trade marks or designs can be made directly to IPONZ  or through international conventions.   Important differences appear to be grace periods for patents and designs, the requirement of an address for service in Australia or New Zealand and a 50-year copyright term.

IP owners can bring infringement proceedings through the civil courts though there is a warning in the Guidance that "this can often be very time consuming and expensive."  Alternative dispute resolution procedures such as mediation, arbitration and expert determination are said to be available.  There are also customs procedures to prevent the importation of infringing articles and criminal penalties for copyright piracy and counterfeiting,  There is a link to a page on IP Enforcement which is maintained by the New Zealand Ministry of Business, Innovation and Employment.

Readers will find more information about this topic on my New Zealand page.  Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Retained EU Law (Revocation and Reform) Bill

 

Jane Lambert

The second reading of the Retained EI Law (Revocation and Reform) Bill took place on St Crispin's Day,  Ironically it was the day on which the bill's sponsor, Mr Jacob Rees-Mogg MP, resigned his portfolio as Business Secretary.  A copy of Mr Rees-Mogg's letter of resignation appears on his website.

According to its explanatory notes, the purpose of the bill is to enable the government to remove the special features of retained European Union law ("REUL") in the English and Welsh, Scottish and Northern Irish legal systems by the end of 2023.  REUL is not defined in the bill but it refers to the regulations and directives of the European Council and Commission and the judgments of the Court of Justice of the European Law which were retained by ss. 2 to 7 of the European Union (Withdrawal) Act 2018 as amended by the European Union (Withdrawal Agreement) Act 2020.   This bill, if passed, is likely to affect intellectual property law in the United Kingdom because much of that law implements EU legislation and case law.

Paea 3 of the explanatory notes states that the bill will achieve its objective by:

(a) repealing or assimilating REUL, within a defined scope, by the end of 2023 

(b) Repealing the principle of supremacy of EU law from UK law by the end of 2023; 

(c) Facilitating domestic courts departing from retained case law; 

(d) Providing a mechanism for UK government and devolved administration law officers to intervene in cases regarding retained case law, or refer them to an appeal court, where relevant; 

(e) Repealing directly effective EU law rights and obligations in UK law by the end of 2023; 

(f) Abolishing general principles of EU law in UK law by the end of 2023; 

(g) Establishing a new priority rule requiring retained direct EU legislation (RDEUL) to be interpreted and applied consistently with domestic legislation; 

(h) Downgrading the status of RDEUL for the purpose of amending it more easily;

(i) Creating a suite of powers that allow REUL to be revoked or replaced, restated or updated and removed or amended to reduce burdens.

The bill as introduced consists of 23 clauses and 3 schedules.

I shall follow the progress of the bill and its application to intellectual property law.  Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.