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INTA Bulletin

December 1, 2017 Vol. 72 No. 20 Back to Bulletin Main Page

INTA Outlines Priorities for Brexit Negotiations


recognizing the mid- and long- term need to advocate for strong IP protection and harmonization...Recognizing the need to further advocate for strong intellectual property (IP) protection and harmonization as Brexit negotiations unfold, the International Trademark Association (INTA) Board of Directors approved a Brexit position paper (detailed below) at its meeting on November 7.

The decision of the United Kingdom to leave the EU—commonly referred to as “Brexit”—following its referendum on June 23, 2016, is the single most important issue for the “unity of the EU,” according to EU Council President Donald Tusk, and the UK’s “future outside the EU,” according to Queen Elizabeth’s 2017 speech to the UK Parliament. Brexit triggered an era of uncertainty not only for government officials, but also for businesses and citizens in the EU and the UK as well as for their international partners. Only two things appear certain in the process of Brexit: its length (two years—until March 2019—or more) and its complexity (given the areas affected, from citizens to funding, from banks to farmers, from agencies to the judicial system, and more).

The triggering of the formal Brexit negotiations in March 2017 and the sixth bilateral rounds of negotiations that ensued since June 2017 have so far failed to shed light as to what a post-Brexit world will look like for citizens and businesses. Moreover, while the EU and the UK are currently focusing negotiations on the fate of their respective citizens living in each other’s territory, the “bill” to be paid by the UK to exit, and the UK’s border with Northern Ireland, intellectual property has been completely left out of the list of priorities on both sides. Therefore, brand owners and practitioners are left in the dark as to what will happen to IP once Brexit actually happens.

Efficient Mobilization, a Clear Position, and Effective Tools Are Essential 

Conscious of this state of play, and willing to address the uncertainties surrounding brand owners and their impact on consumers, INTA has been mobilized from the start. INTA held bilateral meetings with both the EU Commission’s negotiating team and the UK Intellectual Property Office to raise awareness of IP and brand protection and advocate making that a priority in the Brexit negotiations. Moreover, INTA sought to offer brand owners and IP practitioners concrete responses and tools to identify issues.

INTA developed a short-term response by creating the Brexit Rapid Response Group (BRRG) to come up with swift, practical, and strategic proposals to prepare brand owners and IP practitioners to face the consequences of Brexit. In March 2017, for example, the start date of the concrete Brexit negotiations, the BRRG published the Brexit Brands Toolkit: Preparing Brand Owners for Brexit. 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.

On the other hand, in recognizing the mid- and long-term need to advocate for strong IP protection and harmonization, and making that a priority as the process of Brexit negotiations unfolds, INTA decided to form a Brexit Cross-Committee Task Force to make recommendations on issues of particular concern for brand owners. The Brexit Cross-Committee Task Force consists of volunteers from the Legislation and Regulation Committee/Europe and Central Asia Subcommittee, the European National Trademark Offices Subcommittee, EUIPO Subcommittee, and Madrid System Subcommittee of the Trademark Office Practices Committee, the Anticounterfeiting Committee/EU Subcommittee, the Parallel Imports, the Designs Committee, and the Geographical Indications Committee. After a lengthy process to gather the different committees’ input, INTA’s taskforce finally came up with a position paper that was ultimately approved by INTA’s Board of Directors on November 7, 2017.

In particular, INTA is advocating that both the EU and the UK support, promote, and safeguard the following core principles for brand owners and IP right holders during the negotiations as well as when Brexit becomes effective:
  • Minimum disruption of trade;
  • Minimum costs;
  • Maximum retention of rights;
  • Maximum transparency and legal clarity; and
  • A transitional period in order to adapt to the new rules.
With regard to specific issues, INTA is of the opinion that the following should be considered priority during the Brexit negotiations:
  • Registered EU trade marks (EUTMs);
  • EUTM applications;
  • EUTM oppositions;
  • Non-use vulnerabilities of registered trademarks;
  • Trademark cancellation actions;
  • Registered and unregistered Community designs;
  • Geographical indications;
  • Enforceability of court decisions, including preliminary and permanent injunctions;
  • Exhaustion of rights;
  • Territory, including agreements related to license, settlement, and coexistence;
  • Enforcement, including border measures and anticounterfeiting actions;
  • International systems, including Madrid and Hague; and
  • EUTM database/EU designs database.
The Way Forward
This position paper is only a first step. Brexit negotiations continue between the EU and the UK with a possible seventh negotiation round to take place in early December before the EU27 Council meeting (27 heads of state and governments) on December 14‒15. This meeting is notably due to decide whether “sufficient progress” has been made on the current “divorce” phase of the negotiations to consider parallel negotiations on the future relationship between the EU and the UK. This should open new areas and sectors for negotiations (so far only limited mainly to the citizens, the “bill,” the border with Northern Ireland, and other separation issues).

In that framework, INTA will now have to engage in outreach and promote its position paper as well as advocate for IP issues to be put on the agenda of the negotiations as a priority. This strategy will be directed towards both the EU and UK. While the deadline towards Brexit looms (March 2019, if the EU27 Council does not decide to extend it), INTA is fully prepared to advocate and support a balanced and sustainable Brexit agreement for both parties while maintaining strong protection for IP rights and brand owners in the UK as well as in the EU.

See INTA’s dedicated Brexit portal for more information on Brexit and INTA’s actions on the subject.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.  
 
© 2017 International Trademark Association