Earlier in September the European Commission published this position paper on Intellectual Property Rights (including geographical indications) in the context of negotiations under Article 50 TEU.

The position paper, which runs only to 5 pages (actually a fairly meagre 3 and a half pages once you strip out the cover sheet and white space), notes that the UK’s withdrawal from the EU will create uncertainty both for Intellectual Property Right (IPR) holders in the UK and the remaining 27 members of the EU (EU27) in relation to the scope of protection of intellectual property rights.

The position paper goes on to set out some general principles that should apply when the Withdrawal Agreement comes into force. The paper mentions trade mark rights, design rights, supplementary protection certificates (SPCs), database rights and exhaustion of rights. Much media attention was also directed toward the section on Geographical Indications (GIs).

IPcopy has summarised the main points of the paper below but feels like the paper comes across as a bit of a weak effort. It’s quite a high level document which is looking at matters pretty much only from the point of view of EU27 stakeholders. There is nothing on representation rights for EU trade mark and design attorneys (which is important for UK stakeholders as well as attorneys) and nothing on the unitary patent system.

The paper also strays, to my mind at least, into the territory of future arrangements (see reference to UK putting in place domestic legislation for GIs) which is something that Michel Barnier said wouldn’t happen until “sufficient progress” had been made on the withdrawal negotiations. Or maybe I’m reading too much into it…..

General Principles

The paper sets out some general principles that should apply:

1) IPRs having unitary character within the Union – holders of IPRs having unitary character within the EU should be recognised as the holder of an enforceable UK right. The paper suggests that domestic legislation should be introduced if necessary. In particular, the paper suggests that the UK needs to put in place legislation to provide the continued projection of protected geographical indications, designations of origin and other protected terms relating to agricultural products. There doesn’t, however, appear to be any discussion about the rights of UK stakeholders as far as the protection of GIs in the EU is concerned.

The paper suggests that this principle should mean that rights are automatically recognised and at no financial cost to IPR holders. Genuine use requirements for EU trade marks may need to be adapted.

IPcopy notes that there’s a slight discrepancy between the introductory section of the paper (paragraph 2 of page 2) and this first principle. In one instance the paper refers to IPRs having unitary character and in the other this is qualified by “and granted before the withdrawal date”. We’re not sure whether this raises any issue at all.

The paper defines IPRs having unitary character in the EU as including EU trade marks, registered Community designs and unregistered Community designs. Presumably this means that the EU negotiating position will be to try and get the UK to change its unregistered design law to match the protections provided in the EU. This would be an extremely welcome development for anyone that relies on unregistered Community designs since they protect a wider range of design features than UK law (unlike UK unregistered design right, unregistered Community designs protect surface decoration, ornamentation, lines, texture, materials and colour in addition to the shape and configuration applied to a product).

2) Applications for unitary IPRs – applications for unitary IPRs that are still pending at the withdrawal date should be allowed to keep the benefit of any priority date when applying for an equivalent IPR in the UK.

3) Supplementary Protection Certificates – applications for SPCs made before Brexit to a UK authority should continue to be granted.

4) Databases – this is the bit of the paper where there is actually some reciprocity discussed as it suggests UK companies could continue to enjoy protection in the EU27 and EU27 companies should continue to enjoy protection in the UK.

5) Exhaustion of rights – if exhaustion of rights has occurred before the UK leaves the EU then these rights should remain exhausted.

Elephant in the room?

One thing missing from the position paper is any mention of the unitary patent system. Although as currently envisaged the unitary patent system will not cover all 28 states (due to non participation by some states), the system is of course supported by two EU regulations as well as the Unified Patent Court Agreement.

It might therefore have been expected that there would be some mention of the unitary patent system in this paper. The fact that it is missing may be surprising but IPcopy isn’t reading too much into the absence. The unitary patent system is not yet operational which may be one reason that it is not listed. Additionally, the challenges in keeping the UK in the system post-Brexit are probably significant enough that it would warrant its own discussion outside of this paper.