On 7 September, the European Commission published a position paper on intellectual property rights (including geographical indications), setting out how the transition of the UK leaving the EU should take place with respect to certain IPRs to ensure minimum disruption to the UK and the remaining EU27.
The paper contains the main principles of the EU position on IPRs, to be discussed by the EU27 for agreement and then presented to the UK in the context of negotiations under Article 50. It sets out the EU’s position on what the Withdrawal Agreement between the UK and the EU should ensure in relation to: a) the scope of protection in the UK of certain rights; b) the treatment of applications for certain rights; and c) the exhaustion of rights conferred by IPRs. All rights with unitary character within the EU are considered:
• Community Trade Marks
• Registered Community Designs
• Unregistered Community Designs
• Community plant variety rights
• EU database rights
• Protected geographical indications or protected designations of origin.
Essentially, the EU’s position is that holders of unitary IPRs should not be affected by the UK’s withdrawal from the EU.
Scope of protection
Following the UK’s withdrawal, the holder of a unitary IPR should have a comparable right in the UK (if needs be on the basis of specific domestic legislation to be introduced). In the case of geographical indications or designations of origin, this will require entirely new domestic legislation (currently none exists).
The implementation of this principle should include the automatic recognition of an IPR in the UK on the basis of an existing unitary IPR in the EU and should not result in financial costs or unnecessary administrative burden for the holders of unitary IPRs.
The paper specifically states that the implementation of these principles in the UK should include appropriate adaptation of “genuine use” requirements and “reputation” rules to the specific situation under consideration. The paper gives two respective examples: a TM in the UK should not be refused on the ground that the equivalent EU TM had not been put into genuine use in the UK before that date; and a EU TM owner should be able to temporarily exercise rights in the UK equivalent to those in the EU even if the TM does not yet have a reputation in the UK.
Where an application has been submitted before the date of withdrawal, the applicant should be entitled to keep the benefit of any priority date when applying for an equivalent right in the UK after the withdrawal date.
As for SPCs or paediatric extensions, where an application has been submitted before the withdrawal date, an applicant should be able to obtain a right in the UK providing protection equivalent to that under EU law.
Legal protection of databases
Makers or right holders of databases should continue to enjoy protection: Articles 11(1) and (2) of Directive 96/9/EC should be waived in the EU27 in respect of UK nationals, and conversely the UK should waive any equivalent provisions in future legislation and not exclude EU27 nationals and EU27 companies from database rights in the UK on nationality and establishment grounds.
Exhaustion of rights
Rights exhausted in the EU before the withdrawal date should remain exhausted in the EU27 and the UK. The conditions for exhaustion should be those defined by EU law.
The EU’s position is fairly straightforward: right holders should not be affected or placed under any extra financial or administrative burden by the UK’s withdrawal from the EU.
The practical implications of the EU’s proposals are that the cost and effort will have to be borne by the UK government. They would have to ensure that the UKIPO systems and infrastructure can cope with the extra registrations that will eventually be needed and that the right legislation is put in place to ensure the EU’s desired principles (to be included in the Withdrawal Agreement) are implemented properly.
There will no doubt be an interesting period when some very interesting questions will arise in relation to UK and EU rights. The EU is wise to mention specifically the difficulties of genuine use and reputation in the UK in regard to TMs, but there will undoubtedly be many more.
The UK has now published its draft EU Withdrawal Bill and the implications for IP are discussed by Graham Burnett-Hall on page 5 of this edition of ReMarks.