Intellectual Property rights post-Brexit

Intellectual Property rights post-Brexit

Michelmores’ Partner, David Thompson comments on the recent European Commission position paper

On 7 September 2017, The European Commission (EC) published a position paper setting out the European Union’s (EU) position on intellectual property (IP) rights post-Brexit, to be presented to the United Kingdom (UK) in the context of Article 50 negotiations. The paper positively seeks to reduce the uncertainties surrounding the protection of IP rights following the UK’s withdrawal from the EU.

The key principles proposed in the paper are as follows:

  1. Continued protection for certain unitary rights: Any unitary IP rights (e.g. EU trade marks, registered Community designs and protected geographical indications) granted before the date of the UK’s withdrawal shall continue to be given protection within the UK. The paper calls for an “automatic recognition” of such rights in the UK, at no financial cost and minimal administrative burden to the holder of those rights.

In terms of geographical indications and protected designations of origin, the EU will require the UK to put in place the necessary domestic legislation to provide for their continued protection.

  1. Priority benefits: Where an application for an IP right having unitary character is pending at the time of Brexit, the applicant shall be entitled to keep the benefit of any priority date when subsequently applying for an equivalent right in the UK. Interestingly, there is no suggestion of any automatic transfer of pending rights as would seem to be the case for rights already granted.
  2. Supplementary protection certificates (SPC): Applications for SPCs and for an extension of their duration should receive continued protection where such applications have been submitted before and are ongoing on the withdrawal date. The paper does not, however, shed light on whether SPCs will continue to be granted within the UK after Brexit.
  3. Database rights: Any database rights protected prior to the UK’s withdrawal from the EU shall continue to enjoy protection in both the UK and the remaining EU member states.
  4. Exhaustion of rights: The principle of exhaustion in relation to IP rights operates to prevent an IP owner from using its rights to restrict further sales, imports or exports of products which it has already placed on the market.  IP rights which were “exhausted” in the EU prior to Brexit are to remain exhausted in the UK and EU in the post-Brexit era.

Whilst the paper addresses many of the concerns surrounding the protection of IP rights post-Brexit, it fails to discuss the Unitary Patent or Unified Patent Court. As it stands, only EU countries can be a part of the Unitary Patent system. In the absence of any comments from the EC, it is still unclear whether the system will apply to the UK following Brexit. (See here for more on the impact of Brexit on IP matters).

In any event, the paper represents a positive step towards ensuring the protection of IP rights following Brexit, and certainly provides IP stakeholders with some welcome clarity. Whether the UK will be willing to agree to the EU’s “wish list” remains to be seen; however, given the emphasis the UK Government has placed on certainty and continuity, it would be surprising if the UK’s position significantly differed.