EU sets out its position on IP rights post Brexit

The European Commission has published a five page position paper setting out the main principles of its position on intellectual property rights in the Article 50 Brexit negotiations with the UK. 

The paper states that “The holder of any intellectual property right having unitary character within the Union and granted before the withdrawal date should, after that date, be recognised as the holder of an enforceable intellectual property right in relation to the United Kingdom territory, comparable to the right provided by Union law - if need be on the basis of specific domestic legislation to be introduced.”

The Commission provides that the implementation of this principle should include the automatic recognition of such intellectual property rights and should not result in financial costs for the holders of those rights. The paper defines “intellectual property rights having unitary character within the Union” as referring to the following: European Union Trade Marks (EUTMs); registered community designs; unregistered Community design; Community plant variety rights;  protected geographical indications; protected designations of origin; and other geographical indications, traditional speciality guaranteed and traditional terms for wine registered under EU Law. There is no mention in the paper of the unitary patent or the Unified Patent Court (UPC).

The paper highlights the specific case of protected geographical indications and designations of origin and states that the UK should put in place domestic legislation for their continued protection, which is comparable to that provided by EU law.

With regard to pending applications for rights having unitary character within the EU, the paper provides that these should be able to be carried over to UK applications with the same priority date. The paper does not address the issue of professional representation by UK lawyers, patent and trade mark attorneys at the European Union Intellectual Property Office (EU IPO) post Brexit, although the Commission’s proposal that pending applications should be carried over to UK applications perhaps raises the question of whether existing representatives will have transitional representation rights. The paper states that Supplementary Protection Certificates and database rights should continue to be afforded protection equivalent to that provided for by EU law. Goods for which intellectual property rights were exhausted in the EU before Brexit should remain exhausted both in the EU and the UK after Brexit. The conditions for exhaustion should be as defined by EU law.

The position outlined in the Commission’s paper is broadly in line with the position that industry bodies in the UK have lobbied for. While the UK IPO has so far remained tight lipped, it seems likely that the paper will not be seen as controversial. A trickier issue concerns the UK’s involvement in the unitary patent and UPC post Brexit since this requires consideration of constitutional principles, namely the primacy of EU law and the jurisdiction of the Court of Justice of the European Union (CJEU) in matters covered by the UPC agreement.

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