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Brexit update: the EU’s stance on IP

11 September 2017

The European Commission has published its position paper on intellectual property rights in the context of Brexit. 

The Commission’s principal position is that existing intellectual property rights with 'unitary character', such as EU trade marks and registered and un-registered community designs, should continue to be recognised in the UK after Brexit. That recognition should be triggered automatically so that rights holders do not bear any additional financial cost and any administrative burden to them is kept to a strict minimum. 

In relation to applications for such rights that are pending on the date of the UK’s withdrawal, the applicant should be entitled to apply for equivalent protection in the UK and benefit from the priority date of its original application.

The Commission has also set out its position on applications for supplementary protection certificates and extensions thereof. Applicants should still benefit from such rights in the UK (with equivalent protection to that provided under EU law) where the application process has commenced before a UK authority prior to the date of the UK’s withdrawal.

Databases enjoying protection across the current EU Member States should continue to be protected in both the UK and EU after Brexit.

As to exhaustion, intellectual property rights that have been exhausted (as defined by EU law) in the EU prior to the UK’s withdrawal should remain exhausted in both the UK and EU.

Comment

Rights holders will naturally welcome plans that ensure their unitary rights will continue to provide protection across the UK and EU, and without additional financial costs or undue administrative burden. 

However, whilst the solutions proposed sound ‘neat’ in theory, difficulties may arise in practice. The proposed automatic division of EU trade marks and Community Registered Designs would require the importation of hundreds of thousands of designs, and over a million trade marks onto the UK registers. That is a huge transfer of data. Many of these rights may never have been intended to be used in the UK, and will be left to expire when they first come up for renewal following Brexit, or alternatively would become vulnerable to revocation for non-use in the UK after five years.

An alternative solution, and possible UK government counterproposal, would be for registered EU rights to continue to be enforceable in the UK for a transitional period, during which rights holders are required to ‘opt in’ if they require ongoing protection within the UK. However, whilst that solution would likely reduce the data influx, it would also impose some additional administrative burden (and possible legal costs, even in the absence of filing fees) on rights holders. This is to be balanced against the uncertainty caused to businesses wishing to apply for UK rights post Brexit, of the large numbers of registrations that may never be used in the UK being imported onto the UK register. 

The Commission also proposes that trade marks should continue to be enforceable in the UK, despite not having been put to ‘genuine use’ within the UK before the withdrawal date. Similarly those marks having a ‘reputation’ in the EU should continue to benefit from the enhanced rights befitting such marks after Brexit for a temporary period of time, even if the mark in question has no reputation within the UK. Whilst these proposals protect rights holders, they would subject UK businesses to rights held by their European counterparts even if the latter have no genuine dealings in the UK.

Overall, transparency on intellectual property issues during the Brexit negotiations is to be welcomed in our view, and we look forward with bated breath to hearing more on the UK government’s position in this area.

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The content on this page is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.

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