Is the ‘Brexit’ necessarily a threat to the interests of businesses throughout the UK and EU that own or rely on Intellectual property and geographical indication rights protected within the Union?

30 novembre 2017

The first Brexit position paper to cover Intellectual property was issued on 7th September, 2017 [i] by the European Commission. The position paper contains technical aspects procedures and geographical indications of Intellectual property law to be presented to the UK in the context of negotiations under Article 50 of the Treaty of Lisbon. Indeed Article 50 was invoked by the UK on 29 March, 2017 and the negotiations started on 29 June, 2017. It seems that the potential change in Intellectual property law within the EU and the UK could be an obstacle for current IP right owners in regards to the management of their existing IP rights.

The Position paper transmitted to EU27 on Intellectual property rights (including geographical indications) reflects the Commission’s position on the following issues:

  • The unitary character criteria of Trademark and Design rights;
  • Geographical indications;
  • Supplementary protection certificates: the applications and extensions of thereof in regards to patents;
  • Legal protection for databases;
  • The exhaustion of IP rights.

According to the Commission, the owners of rights having ‘unity of character’, such as a European Union trademarks, or registered community designs, shall retain such rights even after the withdrawal of the UK from the EU27, which would require to amend the UK legislation.

Geographical indications, protected designations of origin and other protected terms in relation to agricultural products, provided they were protected under European law before the withdrawal, should also keep the same level of protection.

The Commission would also like the same principle to apply with regards to any application filed in the UK for supplementary protection certificates namely in regards to the extension of their duration. The certificates that were granted or extended before the withdrawal of the UK should still apply post-Brexit.

In light of databases and their legal protection, the Commission’s opinion is that previous makers or right holders who are currently protected under Article 7 of Directive 96/9/EC in the EU Member States should continue to enjoy protection after the withdrawal date in the EU27 and in the UK in relation to those databases. Therefore the requirements of Article 11(1) and (2) should be waived in respect of UK companies, nationals and firms. In reverse, the UK should not exclude EU parties from that same legal protection in the UK.

Finally, the Commission would like to keep the current legislation in regards to ‘exhausted Intellectual property rights’ as it is. This means that when IP rights were exhausted in the European Union territory before the withdrawal date, these rights should remain exhausted in both the UK and EU27 territory and the conditions of exhaustion concerning each Intellectual property right should be those defined by European law.

According to the Commission, it seems that the EU Withdrawal Agreement should therefore pursue certain objectives: namely the need for IP right owners to retain their existing rights, the idea of minimizing disruptions and administrative burdens, and thirdly minimizing the costs to businesses in retention of such rights and protections (as they will not have added administrative requirements or added legal fees).

Conclusively, we believe that the Brexit will undoubtedly have consequences on current and future businesses and individuals that rely on Intellectual property rights. We welcome the Commission’s approach which consists in minimizing legal insecurity for Intellectual property rights holders by advocating for an automatic recognition of existing IP rights throughout the UK and EU27. Nevertheless, one should keep in mind that this might not be the position of the UK on the subject and that the final position will be the result of a complex and lengthy negotiation process. It is now up to the UK government to make its position clear on that issue. For now, the UK government does not have a clear stance on those subjects. On its website, it merely describes what will be the situation in the absence of an agreement on various issues, and specifies that the government is looking at various options and is discussing the best way forward with users of the system and stakeholders (to know more about the UK position, click here).

[i] TF50 (2017) 11 – Commission to EU 27


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