As the UK enters into a new post-Brexit trading relationship with the European Union, this article examines the intellectual property (“IP”) provisions of the recently signed trade deal .
In short, they amount to not much more than a baseline of general principles, many of which are already found in the UK’s other international treaty obligations (such as the TRIPS Agreement 1994).
Even with the trade deal now inked, one of the big unknowns is to what extent (if at all) the UK government and English courts will choose to alter existing English IP law in ways which diverge from our current law and developing EU law.
From 1 January 2021, EU law no longer applies in the UK but still effectively amounts to 40% of our existing law. This existing law is now treated as “EU retained law” and secured (unless and until changed by Parliament or the courts) by the Withdrawal Act . To the extent that EU retained law underlies some of the current UK IP law, nothing will change for now.
EU-wide registered rights
The UK is losing its participation in EU-wide registered IP rights systems, e.g. the European Union Trade Mark, Community Registered Design and the new Unitary Patent system, as well as (at least for a period) the network of enforcement and jurisdiction provisions that have supported pan-European litigation.
From 1 January 2021, the UK element of the different EU-wide rights will be cloned and protected via, respectively:
- ‘Comparable Trade Marks’;
- ‘Re-registered Designs’; and
- ‘Continuing Unregistered Community Designs’.
These will enjoy the same filing and priority dates as the EU rights from which they derive and will be created automatically. For any pending EU applications, a cloned UK right will need to be requested before 30 September 2021.
The EU element of any rights granted before 1 January 2021 will continue automatically but IP proprietors should check that both the UK and EU elements of their trade mark rights are supported by sufficient genuine use in the relevant territories to avoid being vulnerable to revocation.
The IP provisions of the new deal are expressed not to preclude a party from introducing more extensive protection and enforcement of IP rights and set out a fraction of the protection and enforcement rules that currently exist under English law. The trade deal sets out minimum standards of protection for the key IP rights which will need to be maintained.
Exhaustion of IP rights
The parties have confirmed that exhaustion of rights for goods first placed on the market in the European Economic Area (“EEA”) will continue to be recognised in the UK but items put on the market in the UK for the first time after 1 January 2021 will not be able to move freely around Europe and may be challenged by rights holders and customs officials.
Provisions for specific IP rights
Copyright law has been partially harmonised via a number of EU Directives and EU case law, but there is no EU-wide right as such.
The EU/UK trade deal sets out various minimum standards for copyright protection which are largely a regurgitation of the parties’ other international treaty obligations. For example, an author’s exclusive rights in respect of:
- authorisation of or prohibition of reproduction;
- distribution to the public;
- communication to the public and/or rental of works are repeated.
The deal fixes the minimum copyright protection term for copyright works as the life of the author plus 70 years (as it is now). The rights of broadcasting organisations and performers for their performances are set at 50 years after (respectively) the first transmission of the broadcast and the fixation of the performance (or first publication or communication to the public of the performance whichever is earlier), as is the case now.
A resale right is provided for an original work of graphic or plastic art and there is an aspiration to promote cooperation between respective collective management organisations. There is also a minimum level of protection of technological measures to protect computer programs and legal protection against the circumnavigation of such technological measures.
Registered trade marks is one of the areas of IP law that was most closely aligned prior to the departure of the UK from the EU legal system, there having been a unitary right to a European Union Trade Mark which included the territory of the United Kingdom.
The trade mark provisions in the trade deal provide that the parties shall maintain a classification system consistent with the Nice Agreement . The existing categories of signs covered by English and European trade mark law will enjoy continued minimum protection of:
- personal names
- shapes of goods
- packaging and sounds
This is provided that they are capable of distinguishing goods or services of one undertaking from those of another and they can be represented on the register in a clear and precise manner.
The rights conferred by the registered trade mark will remain those set out in the Trade Marks Act 1994. There is no specific provision for the protection of goods or services sold under an identical or similar sign in respect of dissimilar goods or services. However, there is a separate promise to give effect to the protection of well-known trade marks . Whether that gives scope to change English law on the protection of trade marks in respect of competitors who are trading in dissimilar goods/services remains to be seen.
The agreement lists the current exceptions to the rights given by a trade mark. These include:
- the use of geographical indications,
- descriptive terms,
- the names or addresses of natural persons,
- the signs concerning the characteristics of the goods or services, or
- the intended purpose of the product or service.
It also includes the protection of earlier, local rights against the assertion of registered trade mark rights. It includes the current grounds for revocation of a registered trade mark currently set out in section 46 of the Trade Marks Act 1994.
The agreement stipulates that the parties maintain laws in relation to preventing bad-faith trade mark applications.
As with registered trade mark law, design law (both registered and unregistered) has been considerably harmonised over the years of the UK’s membership of the EU and registered Community Designs and Unregistered Community Designs have become an integral part of English design law.
Both parties have to maintain registered protection of new and original designs and the term shall remain a minimum of 25 years from the date the application was filed.
Interestingly, the agreement holds the UK to protecting after 1 January 2021, an equivalent right to the European unregistered design protection of 3 years that currently exists under English law. The UK government has said this right will be called a ‘Supplementary Unregistered Design’, thus adding another layer of right to our already multi-layered design law.
There is also a provision that design protection will not extend to designs solely dictated by technical or functional considerations and allowing for spare part sales.
The long-standing English law on unregistered designs is unaffected by the trade deal.
The section of the trade deal devoted to patents is very short indeed, reflecting the fact it is not an area of harmonised law. There is no mention of the UK’s continued participation in the Unified Patent Court (“UPC”) even though Prime Minister Theresa May ratified the Agreement on a Unified Patent Court in April 2018. Indeed, in February 2020, a government spokesperson confirmed that the UK would no longer be participating in the near EU-wide patent scheme (Spain, Poland and Croatia are also not part of it). This is presumably because the European Court of Justice has a role in that system which is politically unacceptable to the current UK government. It means that Unitary Patent proprietors will not benefit from UK coverage within the new system when it launches (potentially at the end of 2021).
Trade secrets, plant varieties and geographical indications
There are provisions on minimum trade secret protection and a restatement of the protection of plant varieties as set out in the relevant existing international convention .
The thorny issue of geographical indications has been entirely left out of the trade deal, only referenced as “the Parties may jointly use reasonable endeavours to agree rules for the protection and effective domestic enforcement of their geographical indications.” Under the Withdrawal Agreement , EU geographical indications secured by UK producers prior to 1 January 2021 will keep their protected status. The UK has created its own Geographical Indication scheme operated by the Department for Environment Food and Rural Affairs (“DEFRA”).
From 1 January 2021, Great Britain’s producers (but not Northern Ireland’s producers) will be treated as third-country producers when applying for new EU Graphical Indications.
Civil and administrative enforcement
The parties are obliged to make limited provision for injunctions, damages and all the usual minimum remedies for IP rights infringements. However, what is actually missing is the facilitation of the service of proceedings in both jurisdictions, appropriate forum decisions and the enforceability of judgments which were previously covered by the Recast Brussels Convention. The UK has applied to accede to the Lugano Convention 2007, which would mean rules would remain largely unchanged, but this has not been consented to by the EU and all relevant states in time for 1 January 2021.
The situation falls into a lacuna in the meantime whereby it is covered by the common law, bilateral agreements with other countries, such as Norway and, where relevant, the 2005 Hague Convention on Choice of Court Agreements. It is worth noting that the Hague Convention does not cover the EFTA states and only applies where there is a relevant contract with an exclusive jurisdiction clause.
Most existing pan-EU IP rights have been protected in a piecemeal fashion via a cloned UK right and the maintenance of the EU portion of the previous right. In terms of the protection of new IP rights, this will need to be pursued by rights holders both in the UK and in the EU in parallel. Hopefully, the UK will be permitted to join the 2007 Lugano Convention, thereby maintaining broadly similar arrangements on jurisdiction and the recognition and enforcement of judgments around Europe.
What the UK legislature and courts choose to do next on IP protection remains to be seen: will copyright originality swerve off at a tangent from EU case law? Will the monopoly of famous trade marks be somewhat limited in favour of greater competition in the marketplace? Will design protection cover more functional designs? Only time will tell.