Last month, the European Commission published a notice to stakeholders on the impact of the UK’s withdrawal from the EU on customs enforcement of IP rights. The underlying message is that, unless the UK and the EU agree otherwise, the UK will no longer be part of the EU rules on customs enforcement of IP rights post-Brexit. This is important for rights holders because customs enforcement is a critical tool in the fight against counterfeit goods*. Any rights holders who have made or are planning to make a UK application for customs enforcement that applies to one or more other EU member states may want to consider re-filing or making their application in another EU member state in order to be certain of getting the benefit of enforcement in the EU-27 post Brexit. It is not clear at this stage whether and in what form the EU and the UK will come to an agreement on customs enforcement as part of any wider deal on customs arrangements.
Customs Applications made post-Brexit
As matters presently stand, when the UK leaves the EU, applicants for enforcement by customs authorities of IP rights will no longer be able to submit EU applications to UK customs authorities. EU applications submitted in one of the EU-27 Member States will remain valid in the EU27 as of the withdrawal date even if the customs authorities of the United Kingdom are amongst the customs authorities requested to take action.
Post-Brexit impact on existing decisions
However, the most problematic aspect of the notice for UK applicants is that, as at the date of the UK’s withdrawal, applications already granted for customs enforcement in the UK on the basis of EU law will no longer be valid in the EU-27. This implies that existing UK applicants benefitting from a decision to grant customs enforcement throughout the EU would be required to submit a new application with the relevant customs of a Member State should it wish for those Member States to continue taking action. This seems onerous from an administrative perspective and unnecessary. A more practical solution might be to continue to allow existing EU rights holders, whose application was made through the UK, to benefit from customs enforcement in the Member States (not including the UK, of course) in which customs enforcement was previously granted.
What should be done now
The notice does not make clear what customs enforcement in the UK will look like after withdrawal, which will be a matter for the UK to decide if it does not form part of the UK’s trading arrangements with the EU after Brexit – but this is to be expected as, following its withdrawal, the UK will no longer be a part of the EU customs regime and will have its own rules and controls. We will have to wait to see what transitional agreements emerge before the UK’s position can be properly assessed but, at a minimum, it looks likely that, if no transitional arrangements are made, new customs applications will have to be made in the UK and rights holders may want to consider re-filing in the EU-27. You should consider your strategy now and be ready to take the necessary action at short notice.
The UK government is expected to publish its White Paper on Brexit this week and we will be closely following and reporting on LimeGreen IP News any developments related to IP, including customs enforcement.