In the aftermath of the 2016 referendum, it was immediately clear that Brexit would have a special relevance for intellectual property. This is because many IP rights have a prolonged or potentially unlimited duration, so the transition from one legal regime to another presents critical issues unknown to other areas of law. Further, the competitive significance of IP rights has brought them to the forefront of EU law; in this regard, the European Union carried out the following actions in order to prevent them from becoming tools for isolating national markets:

  • enunciated the principle of community exhaustion of IP rights;
  • issued a series of harmonisation directives; and
  • established unitary titles for the entire territory of the European Union.

This is where the aspects of discontinuity that Brexit entails begin. The protection titles that extend to the entire territory of the European Union (EU trademarks and community designs, but also PDOs, protected geographical indications and European plant variety rights) are split in two:

  • the EU right, which remains in force, but is no longer effective in the United Kingdom; and
  • an equivalent British right, but not necessarily with a corresponding regime.

More generally, the choice was made to keep a level of harmonisation between the law of the United Kingdom and that of the European Union higher than the basic level provided for by the Agreement on Trade-Related aspects of Intellectual Property Rights (the TRIPS agreement), but less intense than that of the directives currently in force. This allows each party a wider margin for the development of its respective legislation; however, this margin differs according to the subject matter. With regard to the rules on the enforcement of IP rights, the deviations from Directive (EC) 2004/48 are minimal. Even for border measures on infringing products (which are decisive for the movement of goods), the possibilities to deviate from the current rules are limited. However, for substantive protection of IP rights, there are fewer rules that cannot be changed.

This is particularly true in the field of trade secrets (and therefore of know-how), in respect of which there is little more than the regulation imposed by article 39 of the TRIPS agreement. Therefore, it will be very important that in all contracts involving the transfer or use of confidential information, the parties agree specifically on the aspects that they consider most relevant.

Moreover, the European Union and the United Kingdom will be free to establish their own rules on exhaustion, so that there are no obligations on the United Kingdom corresponding to those in force for the countries of the European Economic Area, to which the effects of EU exhaustion are extended (and vice versa). This, too, calls for more attention to be paid to contractual matters.

Future cooperation on IP matters, which is provided for in the Trade Agreement, will therefore become very important. This task concerns not only governments, but first and foremost European stakeholders and lawyers, both in the United Kingdom and the European Union, who will have to continue to talk to each other and to seek shared solutions for problems that remain largely common.

For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email ([email protected]). The IP Law Galli website can be accessed at