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Contact Information

Hélène Nicora
Representative Officer - Europe 
International Trademark Association (INTA)
14B rue de la Science
1040 Brussels - Belgium
+32-2-880-3722, f: +32-2-808-8464
hnicora@inta.org
 

 What is at stake?

 

On June 23, 2016, a referendum was held in the United Kingdom (UK) to decide whether the United Kingdom should leave or remain in the European Union (EU). The decision to leave won over the decision to stay by 52% to 48%. It is now expected that in March 2017 the UK government will trigger Article 50 of the Treaty of the Functioning of the European Union (TFEU), starting formal negotiations to leave the European Union.

Beyond being unprecedented (it will be the first time that an EU Member State will have left the European Union), the process of the United Kingdom leaving the European Union—commonly known as “Brexit”—will be complex at all levels. While the length of the process (two years or more) and outcome of the negotiations remain unclear, the consequences of Brexit will be far-reaching and will impact the United Kingdom and its EU and global trading partners in many and possibly unforeseen ways.

Companies across all industries and of all shapes and sizes will be affected in a variety of ways, including in areas related to intellectual property and corporate brand protection. What will be the impact of Brexit on the European Union Trade Mark (EUTM)? What will be its impact on the United Kingdom’s participation and influence in the European Union Intellectual Property Office (EUIPO)? How will Brexit affect registration and protection of trademarks, designs, geographical indications, and other intellectual property rights currently harmonized under EU legislation? How will Brexit impact IP protection in the EU Customs Union? What will the effects be on the UK legal profession? How will companies based in or trading with the United Kingdom be affected? 

While many of these questions remain unanswered, INTA has followed developments to ensure that its international membership has access to current information on how Brexit could impact them and to offer guidance as to steps they can take to anticipate these changes. While it is likely that many decisions will be made at a political level by UK and EU authorities, INTA will continue following Brexit policy-related issues closely, working directly with the United Kingdom Intellectual Property Office (UKIPO), EUIPO, relevant EU authorities, and as many other stakeholders as possible to try and ensure that IP and brand-related issues are properly considered as negotiations take place.

 

 Key Dates

 
  • On March 13, the UK deposited its instrument of ratification to join the Geneva Act of the Hague Agreement on the International Registration of Industrial Designs. While it will come into effect on 13 June 2018, it will ensure, once Brexit occurs, that UK applicants can continue to use the system and allowing non-UK applicants to designate both the EU and the UK in one parallel application

  • On February 21, the UK published its own draft text on the transition period (application of EU law in UK territory) once Brexit occurs. IP is not part of the list of provisions in Annex I for which Union law would not apply even during the transition period. The end of the transition period in the text remains 31 December 2020 as proposed by the EU.

  • On March 1, the European Commission published its draft Withdrawal Agreement between the European Union and the United Kingdom. This draft translates into legal terms the Joint Report from the negotiators of the European Union and the United Kingdom Government on the progress achieved during phase 1 of the negotiations, published on 8 December 2017. Intellectual property is included in a Title IV (article 50 to 57) which covers IPRs, TM, design, exhaustion of rights notably. The main principle put forward by the Commission in this IP title is “continued protection in the United Kingdom of registered or granted rights.” This draft will serve as a basis for the negotiations for the EU and will have to be addressed by the UK negotiators in order to agree on a final common text.

  • On March 8, a leaked draft of the EU negotiating guidelines for the second phase of the Brexit negotiations (to be adopted during the EU27 Summit on March 22-23) was circulated. The EU aims, for its future relationship with the UK, at a regular FTA with the UK once it is out. This FTA would include notably: Zero-tariffs trade in goods; “appropriate customs cooperation, preserving the regulatory and jurisdictional autonomy of the parties and the integrity of the EU Customs Union”; “other areas of interest to the Union, for example (…) protection of intellectual property rights, including geographical indications”. On data protection, the EU stresses that “personal data protection should be governed by Union rules on adequacy with a view to ensuring a level of protection essentially equivalent to that of the Union”.
  • On January 30, EU Commission’s Directorate-General For Taxation and Customs (DG TAXUD) issued a notice to stakeholders on the withdrawal of the UK and EU rules in the field of customs and indirect taxation. This 4-page notice does not mention IP but stresses that  “subject to any transitional arrangement that may be contained in a possible withdrawal agreement, as of the withdrawal date, the EU rules in the field of customs (…)no longer apply to the United Kingdom”.

  • On January 29, the EU27 General Affairs Council (all Member-States except the UK) adopted their directives setting out the arrangements for its withdrawal from the European Union. These directives, to be followed by the EU lead negotiator Michel Barnier during the negotiations, indicates notably that “in line with the European Council guidelines of 15 December 2017 and with the negotiating directives annexed to the Council Decision of 22 May 2017 as supplemented by these negotiating directives, it is necessary to complete the work on all withdrawal issues, including those not yet addressed in the first phase. These include –without being confined to –issues such as (…) intellectual property rights, (…) customs-related matters needed for an orderly withdrawal from the Union, protection of personal data and use of information obtained or processed before the withdrawal date”. Moreover, the EU27 Council stresses that the transition period “should not last beyond 31 December 2020”.

  • On January 9, Prime Minister Teresa May announced a –relatively limited- reshuffle of her UK government. While most senior figures remain in post (Boris Johnson as Foreign Secretary or David Davis as Secretary of State for Exiting the European Union), a major change was the ‘IP portfolio’ then held by Jo Johnson (then Minister of State for Universities, Science, Research and Innovation) moving to Sam Gyimah, Minister of State for Higher Education.

  • On December 14-15 2017, the EU27 Heads of States and government (without the UK) held a meeting where they adopted guidelines agreeing that “sufficient progress” has been achieved in the first phase of the Brexit negotiations(i.e. the ‘priority issues’: UK citizens living in the EU and EU citizens living in the UK, the ‘bill’ to be paid by the UK to the EU and the border with Ireland, notably, thereby opening the way to the second phase of the negotiations ( EU-UK future relationship) which should include all outstanding issues (including IP which had not been negotiated yet).

  • On December 14, the EU Commission published a Notice, countersigned by EUIPO, to holders of and applicants for European Union trade marks and Registered Community Designs in the context of the notification of the intention of the United Kingdom to withdraw from the European Union, submitted on 29 March 2017.

  • On December 8, the European Union and the United Kingdom reached a compromise to move onto the second phase of negotiations (on the future EU-UK relationship). The compromise, enshrined in a Joint Report from the Negotiators of the European Union and the United Kingdom Government, is to be adopted by the EU27 heads of States and government during the 14-15 December EU27 Summit. 

  • The main issue of contention now is the timing of moving up to the next phase of negotiations (i.e. on the new relationship between the EU and the UK). While the mandate stipulates that “sufficient progress” on the ‘exit’ phase is needed to move on to the other (initially foreseen for October), the EU Commission clearly stated that there was no “sufficient progress” after the last round (a position shared by the EU Parliament in its – non-binding- resolution adopted on October 3), thereby postposing negotiations on the new relationship to December at best.

  • On October 9-12, the fifth round of ‘Brexit’ negotiations between the EU and the UK took place in Brussels. The discussions once again focused on citizens’ rights, the financial settlement and the border with Ireland with “no great steps forward (…) reached”. The closing joint press conference can be found here.

  • On October 9, the UK has published its position paper on the future UK trade policy which merely mentions that it wishes to promote “strong IP protection” in future bilateral trade deals.

  • On September 25-28, the fourth round of ‘Brexit’ negotiations between the EU and the UK took place in Brussels. The discussions focused on citizens’ rights, the financial settlement and the border with Ireland. The parties published an updated Joint technical note on EU-UK position on citizens' rights. The closing joint press conference can be found here.

  • On September 22, UK Prime Minister Theresa May gave her third important speech on Brexit in Florence (Italy), stressing that the UK wants a transition period (“around two years”) aimed at bridging the gap between leaving the EU in March 2019 and beginning the new trading relationship. On the financial settlement, she confirmed that “the UK will honor commitments it has made during the period of our membership”, without mentioning a number. The speech can be found here.

  • On September 6, the European Commission publishes its position paper on intellectual property. The document notably recognizes that "the holder of any intellectual property right having unitary character within the Union and granted before the withdrawal date should, after that date, be recognized as the holder of an enforceable intellectual property right in relation to the United Kingdom territory, comparable to the right provided by Union law – if need be on the basis of specific domestic legislation to be introduced". It then sets the principles regarding applications for IPRs with unitary character; applications for supplementary protection certificates or for an extension of their duration; legal protection of databases; and exhaustion of rights.

  • On August 28-31, the third round of ‘Brexit’ negotiations between the EU and the UK took place in Brussels. The discussions focused on citizens’ rights, the financial settlement, the border with Ireland, the overall governance of the withdrawal agreement and other separation issues (Euratom, goods placed on the market, on-going Union procedures, judicial cooperation in civil and criminal matters). The parties published an updated Joint technical note on EU-UK position on citizens' rights. The closing joint press conference can be found here.

  • On July 17-20, the second round of ‘Brexit’ negotiations between the EU and the UK took place in Brussels. The aim of this four-day round, which took place in Brussels, was to present the respective positions). Following the round, the parties published a Joint technical note on EU-UK position on citizens' rights. The closing joint press conference can be found here.

  • On June 19-20, On 19 June 2017 Michel Barnier, the EU Chief Negotiator, and David Davis, Secretary of State for Exiting the European Union launched the first round of Brexit negotiations. This two-day event took place in Brussels. Apart from the structure of the negotiations and forthcoming issues, the opening of negotiations focused on issues related to citizens' rights, the financial settlement, the Northern Irish border and other separation issues. The closing joint press conference can be found here.

  • On April 18, UK Prime Minister Theresa May called for an early General Election, to be held on June 8. 

  • On April 19, the UK House of Commons agreed to a motion to hold the early General Election.

  • On March 29, 2017, UK Prime Minister Teresa May officially triggered Article 50 with a letter to Donald Tusk, President of the European Council, notifying him about the UK’s intention to leave the EU. To read the full letter, please click here.

  • On February 1, 2017, the House of Commons voted to advance the bill that would give Prime Minister Theresa May the authority to invoke Article 50 of the TFEU—the formal process of leaving the European Union.

  • On January 17, 2017, UK Prime Minister Teresa May laid out her vision in a landmark speech. While she said that “Brexit means Brexit,” there is a lot of debate about what that will mean in practice, especially concerning the two key issues of how British firms will do business in the European Union and what limitations will be placed on the rights of EU nationals to live and work in the United Kingdom. More of her negotiating hopes can be found in in her key speech on Brexit.

  • On August 2, 2016, the UKIPO published a guide entitled “IP and Brexit: the Facts,” available here.

  • On June 23, 2016, a referendum was held in the United Kingdom to decide whether the United Kingdom should leave or remain in the European Union. The decision to leave won by 52% to 48%.
 

 INTA in Action

 
  • A high-level delegation, composed of INTA CEO Etienne Sanz de Acedo; Board of Directors Member Philippa McLeod (Rolls-Royce plc, UK); Mireille Valvason (Novartis, Switzerland); Jeremy Newman (Rouse, UK, Chair of INTA’s Anticounterfeiting Committee); and INTA Chief Representative Officer ‒ Europe Hélène Nicora, to meet with UK authorities in London on February 26‒28. The delegation met with the UK Intellectual Property Office (UKIPO), the City of London Police Intellectual Property Crime Unit, Justice Arnold, the Chartered Institute for Trade Marks Attorneys, and the Chartered Institute for Patent Attorneys. INTA’s delegation promoted its Brexit position paper, adopted by the Board in November 2017, and insisted that most IP-related issues, since they were neither controversial nor political, could be relatively easily and quickly resolved. However, failure to address them in a timely and appropriate manner could trigger adverse effects for businesses and SMEs operating in or with the UK.

  • The INTA Board of Directors on November 7, 2017 approved a position paper drafted by the Brexit Cross-Committee Task Force, which forms the basis of INTA’s advocacy efforts. The position paper outlines core general principles and specific recommendations related to IP for both the UK and the EU-27 regarding the negotiations concerning the exit of the UK from the EU . It is publicly available here
  • In March 2017, recognizing the need to further advocate for strong IP protection and harmonization as the process of Brexit negotiations unfolds, INTA formed a Brexit Cross-Committee Taskforce to make recommendations on issues of particular concern to INTA. The Brexit Cross-Committee Taskforce consists of volunteers from the Legislation and Regulation Committee/Europe and Central Asia Subcommittee, Trademark Office Practices Committee/European National TM Offices Subcommittee, Trademark Office Practices Committee/EUIPO Subcommittee, Trademark Office Practices Committee/Madrid System Subcommittee, Anticounterfeiting Committee/EU Subcommittee, Parallel Imports Committee, Designs Committee, and Geographical Indications Committee.

  • In March 2017, INTA published the Brexit Brands Toolkit: Preparing Brand Owners for BrexitDrafted by INTA’s Brexit Rapid Response Group, this document serves as a guide for companies on key Brexit issues and on determining the allocation of sufficient resources to prepare a company’s brands for Brexit.
  • In 2016 and 2017, INTA has been represented at various meetings with the UKIPO to exchange on the impact of Brexit on brands and IP rights, and assess the various possible approaches.
  • In October 2016, INTA CEO Etienne Sanz de Acedo met with corporate representatives in London to exchange their concerns about Brexit. The event was organized by INTA members Elipe Limited and Mathys & Squire LLP.
  • The Rapid Response Group is composed of Anna Carboni (Redd Solicitors LLP), Michael Hawkins (Noerr Alicante IP, S.L.), Sheila Henderson (Richemont), Keith Howick (Carpmaels & Ransford), Sarah Lambeth (BP plc), Jeremy Newman (Rouse) and Zorita Pop (Reckitt Benckiser plc).
  • On June 24, 2016, a media statement by INTA CEO Etienne Sanz de Acedo announced the formation of a Brexit Rapid Response Group to advise INTA following the UK referendum on EU membership.