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.

The New Zealand Free Trade Agreement: IP Provisions

Image Credit NASA/JPL-Caltech Public Domain Wikimedia Commons

 

Jane Lambert

According to the Department for International Trade, the Prime Ministers of New Zealand and the United Kingdom agreed in principle the terms of a  free trade agreement on 20 Oct 2021 (see UK agrees historic trade deal with New Zealand  DfIT press release 20 Oct 2021).  Copies of those terms have been posted to the British and New Zealand government websites).

Overview

The agreement in principle contains a short instruction and the following 32 sections:

1. National treatment and market access for goods
2. Rules of origin
3. Customs procedures and trade facilitation
4. Sanitary and phytosanitary measures (SPS)
5. Animal welfare
6. Technical barriers to trade (TBT)
7. Trade remedies
8. Cross-border trade in services
9. Domestic regulation
10. Financial services
11. Telecommunications
12. Temporary entry of business persons
13. Investment
14. Digital trade
15. Government procurement
16. Intellectual property
17. Competition
18. Consumer protection
19. State-owned enterprises and designated monopolies (SOEs)
20. Good regulatory practice (GRP) and regulatory cooperation
21. Labour
22. Environment
23. Small and medium-sized enterprises (SMEs)
24. Trade and gender equality
25. Indigenous trade
26. Trade and development
27. Anti-corruption
28. Transparency
29. Initial provisions and general definitions, final provisions
30. General exceptions and general provisions
31. Dispute settlement
32. Additional outcomes.

The introduction makes clear that the agreement in principle does not create any legally binding obligations.  Work on a legal text which will be binding if it is accepted by the two governments is said to be substantially completed.  In accordance with the Change of Focus announced on 23 Sept 2021, this article will focus on the intellectual property provisions of the agreement in principle.

Intellectual Property

Section 16 of the agreement in principle promises provisions on copyright and related rights, design protection, trade marks, geographical indications (GIs), trade secrets, enforcement, patents and test data but nothing that will affect the price of medicines for New Zealand or the National Health Service. 

Copyright  

In respect of copyright, the New Zealand government has agreed to extend the term of copyright for authors of literary, dramatic, musical, or artistic works by 20 years within 15 years of entry into force of the agreement.  At present, s.22 (1) of the New Zealand Copyright Act 1994 provides a term of the life of the author plus 50 years.  The term of copyright for computer-generated works and works of unknown authors will be increased from 50 years to 70.  There are likely to be similar extensions to copyright in sound recordings and films under s.23 (1) and communication works under s.24 (1).

The British and New Zealand governments have agreed to adopt (in the case of New Zealand) or maintain (in the case of the UK) artists' resale rights schemes on a reciprocal basis. For those who are not familiar with artists' resale rights or droit de suite, I covered the introduction of the British scheme in Copyright: Resale Right Directive to be implemented in New Year on 17 Dec 2005 NIPC Law, Copyright: Resale Rights Directive Implementation on 21 Dec 2021 NIPC Law and Copyright: Happy New Year for Artists on 1 Jan 2006 in NIPC Law.  Further information on the right can be found in this guidance from the Intellectual Property Office. New Zealand will introduce a resale rights scheme within 2 years of the entry into force of the agreement.  

Rights in Performances

The New Zealand government will extend the duration of rights in relation to performances mentioned in s.193 of the New Zealand Copyright Act 1994 from 50 years from the end of the calendar year in which a performance takes place to 70 years within 15 years of the coming into force of the agreement.

Both governments have agreed to adopt or maintain a public performance right for performers to cover communication to the public of phonograms,

Registered Designs

The free trade agreement will require the New Zealand government to make all reasonable efforts to join the Hague Agreement on Industrial Designs. This agreement facilitates the registration of industrial designs in much the same way as the Patent Cooperation Treaty facilitates applications for patents and the Madrid Protocol facilitates the registration of trade marks.  The United Kingdom has been a member since 13 June 2018.

GI

The governments have agreed to review the free trade agreement to ensure that the geographical indications of British agricultural produce and foodstuffs are adequately protected in New Zealand and those of New Zealand agricultural produce and foodstuffs in the UK in the following circumstances.  The first of those is if New Zealand introduces a bespoke scheme for agricultural products or foodstuffs, or substantively amends its domestic registration system.  At present, New Zealand wines and spirits may be registered under the Geographical Indications (Wine and Spirits) Registration Act 2006. The other circumstance is if no changes are made to New Zealand's GI laws within 2 years of the entry into force of the free trade agreement.

Traditional Knowledge

The two governments will work together on the WIPO Intergovernmental Committee on traditional knowledge.  The free trade agreement will contain provisions on genetic resources, traditional knowledge and traditional cultural expression,  For example, the agreement will provide for consideration of traditional knowledge associated with genetic resources in patent examinations.   This will take account of the contribution of the Maori community to New Zealand (see Maori IP on the IP Office of New Zealand's website).

Other Provisions

There are references to wine labelling, medicines and medical devices that may require amendment of existing British and New Zealand IP laws in the technical barriers to trade section.   Similarly in the sections on telecommunications, digital trade, competition and SME.   I will explore those issues more fully when a draft text of the agreement is published.   One possible lacuna in the treaty will be the exclusion of a procedure for resolving disputes between investors and host governments.

Further Information

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

Brexit Briefing November 2020

Dover Beach

Jane Lambert

This is my last Brexit Briefing before the end of the transition period.  I delayed it much longer than I should have done to await the outcome of the negotiation between representatives of the British government and the Commission on the UK's future relationship with the European Union.  I have decided not to wait any longer for two reasons. The first is that we may not get an outcome tomorrow. Both sides are gloomy but that does not mean that talks will not continue.  The second is that an agreement may not make all that much difference to businesses and individuals in practice as there will be checks, delays and inconvenience even under a free trade agreement.

The very first Brexit Briefing grew out of a talk that I gave in chambers on IP planning for brexit on 7 Dec 2016.  There were then many uncertainties as to what would happen to Community designs and plant varieties, EU trade marks, geographical indication, the trade secrets directive, the unitary patent and the Unified Patent Court.  Because those uncertainties were likely to be resolved in the negotiations on the terms of the UK's withdrawal, I advised my audience to "Follow the withdrawal negotiations closely, particularly in so far as they affect [their] clients' industries" on slide 21.  I tried to monitor those developments in NIPC News but their speed and complexity prompted me to launch this blog.

Many of the uncertainties have been revolved.   The Trade Secrets Directive came into force during the 2 year notice period (see Transposing the Trade Secrets Directive into English Law: The Trade Secrets (Enforcement etc) Regulations 6 Jun 2019 NIPC Law).  The withdrawal agreement preserved EU intellectual property rights by converting them into national rights (see Intellectual Property Post Brexit 2 Feb 2020 and The Intellectual Property Provisions of the Draft Withdrawal Agreement 19 Nov 2019). Sadly, as I had anticipated in 2016 the UK has withdrawn from the Unified Patent Court Agreement just before Germany introduced legislation ratifying its accession (see Unified Patent Court Ratification Bill clears Lower House of the German Federal Parliament 30 Nov 2020).

A remaining uncertainty is what is to happen to cross-border litigation after the Brussels Regulation (Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters OJ L 351, 20.12.2012, p. 1–32) ceases to apply to the UK. This country has applied to accede to the Lugano Convention (Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters OJ L 339, 21.12.2007, p. 3–41) but has not yet secured the consent of all members. The UK is party to the Convention of 30 June 2005 on Choice of Court Agreements which will come into effect at 23:00 on 31 Dec 2020 and regulations have been made to implement these changes. The Ministry of Justice has provided guidance on these matters in Cross-border civil and commercial legal cases: guidance for legal professionals from 1 January 2021.

As the process of dissolving the UK's 47-year legal relationship with its immediate neighbours will end at 23:00 on 31 Dec, brexit will in a sense be done.  I had thought about ending this blog at the same time but I believe that there will be many issues arising from brexit for many years to come.  There will be new initiatives like the English speaking commercial court in the Netherlands which are likely to interest businesses in the UK. The unitary patent will provide cost savings and other advantages for British companies even though the UK has withdrawn from the UPC agreement, There will be IP provisions to consider in the free trade agreements that the government hopes to negotiate. Also, it is not out of the question that the brexit experiment will be seen to fail sooner rather than later in which case it will be necessary to monitor the art 49 accession negotiations.

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

Agreement in Principle on a Comprehensive Economic Partnership with Japan

 

Japan from Space

Jane Lambert

It is good to report a smidgeon of good news in a week in which a Minister of the Crown admitted in the House of Commons that the British government intends to breach an international agreement that it entered on our behalf just a few months ago.  That smidgeon was the press release of 11 Sept 2020 by the Department for International Trade that an agreement for a UK-Japan Comprehensive Economic Partnership was reached in principle by the International Trade Secretary Liz Truss and Japan’s Foreign Minister Motegi Toshimitsu on a video call on 11 Sept 2020.

Now it must be emphasized that an agreement in principle is not the same as a signed treaty and that there can be many slipups between those two points.  Cynics might also say that the timing of the announcement of an agreement in principle at a time when relations with the remaining member states of the EU are deteriorating is not coincidental.  The claim to have secured a free trade agreement with Japan at this stage is premature and over-optimistic.  If the agreement is signed it will indeed be the UK's first major trade deal since it left the EU but it has to be remembered that Japan is only the UK's 13th largest market accounting for only US$8.3 billion or 1.8% of exports.

No draft treaty appears to be available at this stage but the press release contains particulars of the agreement in principle.  The following information will be of particular interest to intellectual property practitioners:

"Cutting-edge digital & data provisions that go far beyond the EU-Japan deal. These will enable free flow of data whilst maintaining high standards of protection for personal data. We have also committed to uphold the principles of net neutrality, as well as introducing a ban on data localisation, which will prevent British businesses from having the extra cost of setting up servers in Japan. This will help UK fintech firms operating in Japan - like Revolut and Transferwise - to innovate and grow."

That suggests some sort of accommodation for Japan in our data protection laws which may have consequences for data flows between Britain and the EU.

"New protection for more iconic UK goods – increasing geographical indications (GIs) from just seven under the terms of the EU-Japan deal to potentially over 70 under our new agreement, covering goods including English sparkling wine, Yorkshire Wensleydale and Welsh lamb. This would lead to improved recognition of key UK brands in the Japanese market."

This is interesting because nobody seems to know how geographical indications will be protected in the UK after 31 Dec 2020.  At present, the UK is committed to the continued protection of geographical indications by art 54 (2) of the Withdrawal Agreement.  However, Lord Frost has indicated that he wants to renegotiate the provisions for geographical indications but has not spelt out what sort of legal protection for GIs that he wants.  Readers will recall that I asked one of the officials who is negotiating our comprehensive economic partnership with Japan what sort of IP rights we could expect last month:

"I asked Olivia Wessendorff of the Department of International Trade, one of the negotiators for the free trade agreement with Japan, whether she could share any insight on the changes that the government desired (see Virtual Cambridge: Informa Connect's IP Law Summer School 2020 22 Aug 2020 NIPC Training). She replied that her department was not responsible for negotiations with the EU. The last she had heard the government intended to create a GI regime on the lines of the EU one." (see Jane Lambert Brexit Briefing Ausgust 2020 4 Sept 2020).

The press release also promises new protection for the creative industries in Japan:

"New protections for UK creative industries – British businesses can now be confident that their brands and innovations will be protected. We have gone beyond the EU on provisions that tackle online infringement of IP rights, such as film and music piracy."

Should the proposed agreement ever be signed with Japan I shall return to this topic. If the agreement requires legislation here or in Japan to implement the treaty, I will discuss them in this publication.

Anyone wishing to discuss this article or the proposed agreement may call me on +44 (0)20 7494 5252 during UK office hours or send me a message through my contact form.  

Brexit Briefing August 2020

Author  Pedroserafin  Licence CC BY-SA 3.0,

Jane Lambert

Talks on the new relationship continued between British and EU officials throughout August but without outwards signs of progress.  In a speech to the Institute of International and European Affairs published on 2 Sept 2020, Michel Barnier complained of the UK's failure to engage in discussions on:

• credible guarantees for open and fair competition particularly in state aid, labour and environment;
• fisheries; and
• dispute settlement.

Monsieur Barnier acknowledged the UK's avowed ambition for a clean break but noted that its negotiators wanted to keep many of the advantages of  EU membership such as transport, trading conformity assessment for its goods and police and judicial cooperation.  He also expressed concern at the British request to renegotiate indications provisions of the withdrawal agreement and at progress of implementing the Northern Irish protocol.

The British request to renegotiate the geographical indications provisions of the withdrawal agreement is curious because it is not clear what the British government wants to put in their place.  As she had mentioned GIs several times in her talk to the Informa IP Law Summer School, I asked Olivia Wessendorff of the Department of International Trade, one of the negotiators for the free trade agreement with Japan,  whether she could share any insight on the changes that the government desired (see Virtual Cambridge: Informa Connect's IP Law Summer School 2020 22 Aug 2020 NIPC Training).  She replied that her department was not responsible for negotiations with the EU. The last she had heard the government intended to create a GI regime on the lines of the EU one.

In his speech to the Institute Monsieur Barnier warned that from the 1 Jan 2021 British financial services firms will lose their passporting rights,  Britsh manufacturers' type approval will cease to be recognized and there will be customs formalities at all EU ports and airports even with the most favourable trade deal.  The Britsih government appears to be resigned to greater birder formalities for it has recently announced £50 million funding for new customs intermediaries and completed a consultation on a new border strategy for 2025.  Clearly, anybody hoping to do substantial business with EU countries after that date (particularly financial and professional services providers) should have started planning for those realities.

Probably by the end of this month and certainly by the end of October, we should know whether there will be a new partnership agreement.  Neither side sounds particularly hopeful.  How much difference any such agreement will make is debatable.  Anyone wishing to discuss this article or anything mentioned or referred to it it should call me on +44 (0)20 7474 5252 or send me a message through my contact form.

Geographical Indications after Brexit

Stilton Cheese

Author: Dominik Hundhammer
Licence: Creative Commons Attribution-Share Alike 3.0 unported

Source Wikipedia  Commons

Jane Lambert

A geographical indication is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin.  Examples include Cornish pasties, Scotch whisky and, of course, Stilton cheese (see HM Government Protected Food Scheme: UK registered products 15 Jan 2014). The UK is bound to protect such signs by art 22 of the Agreement on Trae-Related Aspects of Intellectual Property Rights ("TRIPS") and art 10bis  of the Paris Convention for the Protection of Industrial Property.

HM Government discharges those obligations by

• collective and certification marks;
• the extended action of passing off; and
• special European Union legislation for agricultural farm products and foodstuffs and wines and spirits.

The special EU legislation is 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 14.12.2012.

If and when the UK ever leaves the EU, Regulation 1151/2012 will cease to apply to the UK except in so far as, and to the extent that, it is caught by s.3 of the European Union (Withdrawal) Act 2018.  The draft withdrawal agreement of 14 Nov 2018 provided for EU law, including that regulation, to continue to apply to the UK from the exit date to the 31 Dec 2020. Thereafter art 54 (2) of that agreement provided for at least the same level of protection to continue to apply to products registered under regulation 1151/2012 from 31 Dec 2020 without any re-examination. Paragraph 45  of the political declaration on the future relationship between the EU and UK noted the protection afforded to existing geographical indications in the withdrawal agreement and required  the UK and EU to  seek to put in place arrangements to provide appropriate protection for their respective geographical indications.

Unless the British government revokes its notification of intention to leave the EU of 29 March 2017 before 31 Oct 2019 (or the expiry of such further extension to the notice period as may be agreed by the UK and remaining member states) this country must implement its own scheme for protecting geographical indications before 31 Oct 2019 or 31 Dec 2020 at the latest. The Department for the Environment, Food and Rural Affairs ("DEFRA") has already held consultations on establishing a UK geographical indications scheme after brexit and the enforcement of what it calls "the protected food name scheme". There is as yet no draft legislation but DEFRA has published Guidance on protecting food and drink names if there's no Brexit deal, 

The guidance states that the UK will set up its own geographical indications scheme which will be managed by DEFRA. The department will maintain a register of protected products and process new applications. The new UK scheme will use the same classes as the current EU one, namely:

• Protected Designation of Origin (PDO)
• Protected Geographical Indication (PGI), and
• Traditional Specialities Guaranteed (TSG).

Local authority trading standards officers will enforce the legislation.

All existing UK products registered under the EU scheme will automatically get UK status and remain protected in the UK. Food and drink producers from the UK and abroad will be entitled to apply for protection in accordance with advice to be published by DEFRA in October. DEFRA will design a new set of logos for each of the above classes which may be used by British and overseas food producers alike.

British products will continue to be protected by EU legislation and the legislation of third countries with which the EU has a trade agreement if the UK leaves the EU in accordance with the draft withdrawal agreement or possibly such other agreement as may be negotiated.  The guidance warns that that may not happen if the UK leaves without a withdrawal agreement in which case British food and drink producers will have to reapply to the Commission for EU geographical indication protection or some other form of protection such as a certification or collective EU trade mark,

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

The IP Provisions of the Future Relationship Agreement with Iceland, Liechtenstein and Norway

Stilton Cheese

Author Dominik Hundhammer

Licence Creative Commons Attribution-Share Alike 3.0 unported

Source Wikipedia

Jane Lambert

In Future Relationship Agreements with the EFTA States 3 Jan 2018 I explained that future relationship agreements were required not just with the remaining member states of the European Union but also with the member states of the European Free Trade Association ("EFTA").  All the EFTA states except Switzerland are members of the European Economic Area ("EEA") which provides for free movement of labour. As a result, significant numbers of British citizens to live in Iceland, Liechtenstein, Norway and Switzerland and many Icelandic, Liechtenstein, Norwegian and Swiss citizens have moved here.  As the current British government believes that the Brexit referendum result requires the UK to leave the EEA as well as the EU, provision has to be made for those expatriates as well as for the continuation of accrued rights of businesses and individuals that have been acquired under the EU legislation that extends to the whole of the EEA.

The governments of Iceland, Liechtenstein, Norway and the United Kingdom have addressed those issues in an Agreement on arrangements between Iceland, the Principality of Liechtenstein, the Kingdom of Norway and the United Kingdom of Great Britain and Northern Ireland following the withdrawal of the United Kingdom from the European Union, the EEA Agreement and other agreements applicable between the United Kingdom and the EEA EFTA States by virtue of the United Kingdom’s membership of the European Union which they announced on 20 Dec 2018.  I discussed that agreement in my article yesterday.  One of the issues covered by that Agreement is intellectual property.   The provisions on intellectual property fall within Title II of Part Three of the Agreement.  Arts 46 and 47 deal with geographical indications, art 48 continued protection of databases and art 49 exhaustion of rights. 

In Geographical Indications after Brexit 6 Oct 2018 NIPC Branding I mentioned the government's intention to set up the UK's own geographical indications scheme as announced at paragraph 39 of its white paper on The future relationship between the United Kingdom and the European Union Cm 6593 and its guidance Producing food products protected by a ‘geographical indication’ if there’s no Brexit deal which was originally published on 24 Sept 2018 and has been updated on 19 Dec 2018.  It would appear from the ponderous language of art 46 that the new British scheme will protect the geographical indications of products from the EFTA states for so long as they are protected in the EFTA states under the EU legislation that extends to those states:

"Where a geographical indication within the meaning of Regulation (EC) No 110/2008 of the European Parliament and of the Council, pertaining to a product of an EEA EFTA State, is protected on the last day of the transition period by virtue of that Regulation, those persons who are entitled to use the geographical indication concerned shall be entitled, as from the end of the transition period, without any re-examination, to use the geographical indication concerned in the United Kingdom, which shall be granted at least the same level of protection under the law of the United Kingdom as under the following provisions: 

(a)   point (i) of Article 4 (1) of Directive (EU) 2015/2436 of the European Parliament and of the Council; and 

(b)  in view of the geographical indication concerned, the first subparagraph of Article 15 (3), Article 16 and Article 23 (1) of Regulation (EC) No 110/2008 and, in so far as to the extent related to compliance with those provisions of that Regulation, Article 24 (1) of that Regulation. 

Where a geographical indication referred to in the first subparagraph ceases to be protected in the EEA EFTA States after the end of the transition period, the first subparagraph shall cease to apply in respect of that geographical indication. 

The first subparagraph shall not apply where protection in the EEA EFTA States is derived from international agreements, other than the EEA Agreement, to which the EEA EFTA States are party. 

This Article shall apply unless and until an agreement that supersedes this Article enters into force or becomes applicable."

 Art 47 (1)  of the Future Relationship Agreement requires no charge to be made for the registration, grant or protection of a geographical indication under the new British scheme.  Indeed, art 47 (2) makes clear that it will not even be necessary to make an application or undertake any particular administrative procedure to gain protection under the new scheme.  However, art 47 (3) reserves a right for the British government to charge renewal fees under its proposed new scheme and allows for the surrender of rights under such scheme.

Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases (OJ L 77, 27.3.1996, p. 20–28) required EEA member states to create a new intellectual property right known as "database right"to protect investment in obtaining, verifying and presenting the contents of a database.  One of the conditions for the subsistence of database right is that the person who takes the initiative in obtaining, verifying or presenting the contents of a database and assumes the risk of investing in that obtaining, verification or presentation ("the maker") is a national, corporation or partnership that includes a national of a European Economic Area member state. In the absence of any agreement, nationals, corporations and partnerships from the UK will lose database protection in Iceland, Liechtenstein and Norway after the UK leaves the EEA and, conversely, databases made by makers in those states will lose their database rights protection here.  Art 48 provides for the continued protection of the database rights of British makers in Iceland, Liechtenstein and Norway and for the continued protection of Icelandic, Liechtenstein and Norwegian makers here.

The doctrine of exhaustion of rights can be summarized as follows.  Once a product that is protected by an intellectual property right ("IPR") has been sold by or with the consent of the owner of that right, the IPR right is said to be exhausted, that is to say, it can no longer be exercised by the owner of the right.  A good example of that doctrine and its application to the EEA is provided by s.12 (1) of the Trade Marks Act 1994:

"A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent."

After the UK leaves the EEA this provision will no longer apply to Iceland, Liechtenstein and Norway in the absence of a specific agreement to the contrary.  Art 49 of the Future Relationship Agreement provides that IPR which were exhausted both in those states and in the UK before the end of the transition period under the provisions of the EEA Agreement shall remain exhausted both in those states and in the UK.

The Future Relationship Agreement refers in many places to a transition or implementation period which will come into being only if the UK concludes the draft withdrawal agreement with the remaining EU member states.  If the UK leaves the EU without such an agreement, the Future Relationship Agreement would require substantial last-minute modification if indeed it were to come into effect at all.  The negotiations with the EEA states have been carried out without much fuss or publicity and the Future Relationship Agreement is a lot simpler and shorter so renegotiation may be possible if all parties retain the political will to do so.

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

No Deal Preparations on Each Side of the Channel

Jane Lambert

Yesterday I was snowed under with a blizzard of emails from our own government setting out its preparations for "no deal".  Though they arrived the day after the cabinet had announced an intensification of preparations for a departure without a withdrawal agreement it was obvious that they had been planned if not written a good deal earlier.

Although I ploughed through all those emails I selected three that are likely to be of interest to my readers:

• Producing food products protected by a ‘geographical indication’ if there’s no Brexit deal;
• Existing free trade agreements if there’s no Brexit deal; and 
• Trade remedies if there's no Brexit deal.

The first of those emails updates guidance which was first published on 24 Sept 2018 which I mentioned in Geographical Indications over Brexit 6 Oct 2918 NIPC Branding.  The email gives more details of the new British scheme for protecting geographical indications which will be published shortly including the new logo and the protection that UK producers can expect in the remaining states and EU producers in the UK after 29 March 2019.  I shall offer seminars on the new British system at our chambers in London and Birmingham during the New Year,

The second states that HM government will try to negotiate bilateral agreements with third countries that replicate those countries' arrangements with the EU as soon as possible after Brexit.  Until these are agreed the United Kingdom will rely on "most favoured nation" terms.

Finally, a new quango is to be set up by the name of the Trade Remedies Authority which will investigate complaints of dumping and unfair practices. The guidance does not say what will be done if the quango finds an unfair trading practice but Annex 2 to the WTO Agreement provides for consultations. references to dispute settlement panels and corrective measures.

I also received a succinct Communication from the Commission to the European institutions preparing for the withdrawal of the UK from the EU on 30 March 2019 and implementing the Commission’s Contingency Action Plan.  The Communication discusses the Action Plan and sets out the following principles for contingency measures:

• "Contingency measures should not replicate the benefits of membership of the Union, nor the terms of any transition period, as provided for in the draft Withdrawal Agreement; 
• They should be temporary in nature. For the measures adopted today, the Commission has, where relevant, proposed time limitations which are a function of the specific situation in the sector concerned;
• They should be adopted unilaterally by the European Union in pursuit of its interests and should be revocable at any time; 
• They should respect the division of competencies provided for by the Treaties; 
• National contingency measures should be compatible with EU law; 
• They should not remedy delays that could have been avoided by preparedness measures and timely action by the relevant stakeholders."

The Communications addresses citizens; rights, financial services, air traffic, road haulage, customs and climate change policy.

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

The Intellectual Property Provisions of the Draft Withdrawal Agreement

Author Furfur
Licence Creative Commons Attribution-Share Alike 4.0 International

Jane Lambert

Art 126 of the Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community which was published on 14 Nov 2018 provides for a transition or implementation period to begin no later than 29 March 2018 and continue at least until 31 Dec 2020.  During that period, EU law would continue to apply to and subsist in the UK by virtue of art 127.  That would include the legislation establishing EU trade marks, Community designs and plant breeders' rights, geographical indications, database rights and supplementary protection certificates. 

Preservation of EU Intellectual Property Rights

At the end of the implementation period, all IP rights granted under EU law would lapse pursuant to art 50 (3) of the Treaty on European Union.  Arts 54 to 61 of the draft withdrawal agreement make provision for the preservation of those rights as UK intellectual property rights at the end of the implementation period. The draft withdrawal agreement makes no provision for the Unified Patent Court Agreement which is awaiting German ratification.   However, if Germany ratifies the Unified Patent Court Agreement during the implementation period there would appear to be no reason why that agreement should not come into force during that period,  What would happen after that will depend on the terms of the UK's future relationship with the EU.

Future Relationship

As I said in A Withdrawal Agreement Reading Guide of 15 Nov 2018, bullet points for an agreement on the future relationship appear in the Outline of the Political Declaration setting out the Framework for the Future Relationship between the European Union and the United Kingdom,  The bullet point on intellectual property could not be briefer:

• "Protection and enforcement of intellectual property rights beyond multilateral treaties to stimulate innovation, creativity and economic activity."

The words "beyond multilateral treaties" are at least compatible with the possibility of continued British participation in the UPC Agreement.

Trade Marks, Registered Designs and Plant Varieties

Art 54 (1) of the draft withdrawal agreement provides for the conversion of EU trade marks, registered Community designs and plant varieties into corresponding British IP rights:

"The holder of any of the following intellectual property rights which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom under the law of the United Kingdom:

(a) the holder of a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services;
(b) the holder of a Community design registered and, where applicable, published following a deferral of publication in accordance with Council Regulation (EC) No 6/2002 shall become the holder of a registered design right in the United Kingdom for the same design;
(c) the holder of a Community plant variety right granted pursuant to Council Regulation (EC)No 2100/94 shall become the holder of a plant variety right in the United Kingdom for the same plant variety."

Art 55 (1) requires the registration of converted trade marks, design registrations and plant varieties to be free of charge.  The Intellectual Property Office and Plant Variety Rights Office will use data supplied by the EU Intellectual Property Office and Community Plant Variety Office pursuant to art 55 (3).  The UK will honour international trade mark and design applications design applications that designate the European Union during the implementation period pursuant to art 56.

Those new converted rights would be revoked, declared invalid or null and void or cancelled automatically pursuant to art 54 (3) if the corresponding EU right were revoked, declared invalid or null and void or cancelled by any administrative or judicial proceedings which was ongoing before the end of the implementation period.  However, the article makes clear that that would not happen if the grounds of revocation, invalidity or cancellation did not apply to the UK.  In particular, art 54 (5) (b) provides that a converted trade mark will not be revoked on grounds of no genuine use in the EU if it has been put to genuine use in the UK even if the corresponding EU trade mark is revoked.

The priority date for a converted trade mark will be the same as for the corresponding EU trade mark (art 54 (5) (a)). The date of filing or priority of a converted registered design or plant variety right shall be the same as for the corresponding Community right (art 54 (6) (b)). Arr 54 (5) (c) entitles the proprietor of a converted trade mark that has acquired a reputation in the EU before the end of the implementation period to sue under s,10 (3) of the Trade Marks Act  1994.   The renewal date for converted trade marks and registered designs in the UK would be the same as for the corresponding EU trade mark or registered Community design in the EU (art 54 (4)).  The term of protection for a converted registered design or plant variety right in the UK shall be at least as long as the remaining period of protection for the corresponding registered Community design or plant variety in the EU (art 54 (6) (a)).

Where an application for an EU trade mark or registered Community design is made but not granted during the implementation period. art 59 (1) entitles the applicant to apply for  UK trade mark or, as the case may be, registered design with the same priority date as the EU trade mark or registered Community design so long as the application is made within 9 months of the end of the implementation period. Art 59 (2) provides a similar right for applicants for Community plant varieties save that the application must be made within 6 months of the end of the implementation period.

Unregistered Community Designs
The UK is required by art 57 to create an unregistered design right equivalent to unregistered Community designs and to protect unregistered Community designs that come into being before the end of the implementation period under that new right.

Database Rights
Art 58 (1) requires the UK to continue to recognize database rights that are acquired before the end of the trnsition period  to the same extent as they are protected in the remaining member states provided that holders of those rights continue to comply with the qualification requirements set out in art 11 of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases (OJ L 77, 27.3.1996, p. 20).  Conversely, British nationals will continue to enjoy database rights that are acquired in the remaining member states before the end of the implementation period.

Supplemental Protection Certificates
Applications to the IPO for supplemental protection certificates in respect of plant protection and medicinal products within the transition period but not yet granted will be treated as though they had been granted during the implementation period (art 60).

Geographical Indications
Art 54 (2) requires the British government to pass legislation to protect in the UK geographical indications, designation of origin or traditional specialities in the same way and to the same extent as they are protected in the EU.  Any such right subsisting in the EU at the end of the implementation period will continue to apply in the UK after the end of that period,  Such right shall cease to apply in the UK if it ceases to apply in the EU.

Further Information
It is stressed that these arrangements shall apply only if the withdrawal agreement comes into force. Should it fail to do so readers should consult the guidance that has been given by the British government in the event of the UK's departure from the EU without a withdrawal agreement (see IP after Brexit - the Government's Guidance  22 Oct 2018 NIPC Law, Patents if there’s no Brexit Deal 3 Oct 2018 NIPC Brexit, Geographical Indications after Brexit 6 Oct 2018 NIPC Branding, EU Trade Marks and Community Designs after Brexit 15 Oct 2018 NIPC Brexit, Copyright and Related Rights after Brexit 19 Oct 2018 NIPC Brexit, and Plant Breeders' Rights after Brexit 21 Oct 2018 NIPC Brexit).

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