Europe Update: All Eyes Focus on Brexit, Enforcement Issues

In Brief: What Happened Last Month in Europe

INTA submitted comments to the European Commission’s Directorate General for Trade (DG TRADE) on the EU-proposed draft IPR (Intellectual Property Rights) Chapter of the Free Trade Agreement under negotiation with New Zealand.
INTA submitted comments to the Spanish Patent and Trademark Office on the draft regulation implementing the amended Law on Trademarks, which aims to implement the EU Trademark Directive.
The 2019 INTA Europe Conference: Embracing Change, drew a larger-than-expected crowd of more than 350 brand owners, intellectual property (IP) counsel, entrepreneurs, representatives of IP offices and IP associations, academics, and others, from 58 countries. Read the report in the INTA Bulletin here. The INTA Europe Office held a side meeting with the heads of French and Swiss IP Offices to discuss innovation and the IP office of the future.
The Italian Intellectual Property Office (UIBM) offers a new optional fast-track process for the examination of trademark applications. Rights holders that file trademark applications on UIBM’s online portal can opt for the fast procedure, which offers two main advantages: (1) rapidity (120 days between filing and publication vs. 180 days with the normal procedure); and (2) the reduction of the possibility of errors due to this reduced time.
March 8: Carolina Oliveira, INTA’s Policy Officer-Europe, met with Valon Kashtanjeva, Director of Kosovo’s Copyright Office, in Brussels, Belgium, to discuss the Office’s priorities and future cooperation opportunities with INTA.

In the Spotlight: Priority Issues in Europe

To B(r)e(xit) or Not to B(r)e(xit) … No Final Outcome in Sight at D-15

Two weeks from Brexit day, and the fate of Brexit is still very much uncertain.

Things had started well. In order to try to secure a backing of the UK Parliament on the deal, British Prime Minister Theresa May managed to get some binding reinsurances from the EU side on March 11 with the adoption of the following documents:

An “[i]nstrument relating to the agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community” (on the “divorce”). It provides “a clear and unambiguous statement by both parties to the Withdrawal Agreement of what they agreed in a number of provisions of the Withdrawal Agreement,” “a document of reference that will have to be made use of if any issue arises in the implementation of the Withdrawal Agreement” and has “legal force and a binding character.” It notably provides clarification on the “backstop” scheme with regard to Northern Ireland.
A joint statement supplementing the political declaration setting out the framework for the future relationship between the European Union and the United Kingdom of Great Britain and Northern Ireland (on the “future relation”). It reiterates the “shared ambition to have the future relationship in place by the end of the transition period” and that “immediately following the United Kingdom’s withdrawal, they will take the steps necessary to begin formal negotiations.” Moreover, they stressed their “firm commitment to work at speed on a subsequent agreement that establishes by 31 December 2020 alternative arrangements such that the backstop solution in the Protocol on Ireland/Northern Ireland will not need to be applied.”
A unilateral “Declaration by Her Majesty’s Government of the United Kingdom of Great Britain and Northern Ireland concerning the Northern Ireland Protocol,” adopted by the UK, stressing the UK’s right to apply to an arbitration panel to exit the backstop if no agreement on the future relationship with the EU can be reached.

Such reinsurances were not enough to convince a majority of Members of Parliament (MPs) to back the “divorce” agreement:

On March 12, the UK MPs rejected the “divorce” agreement by a substantial majority of 391 votes to 242, though by a thinner margin than during the first vote on the deal in January (432 to 202).
On March 13, the UK MPs voted with a very narrow majority (312 to 308) to reject a “no-deal” Brexit under any circumstances. That vote, however, is not binding; that is, under current law, the UK could still leave without a deal on March 29.
Finally, on March 14, the UK Parliament voted with a strong majority of 413 votes to 202, to ask for an extension of Article 50, thereby delaying Brexit beyond March 29.

The fate of such extension is now in the hands of the EU. Indeed, Article 50 provides that “the European Council, in agreement with the Member State concerned, unanimously decides to extend this period.” It is therefore up to the 27 EU heads of state and government to decide, unanimously, whether they will grant such an extension, but also the length of such extension, during an EU summit March 21‒22 in Brussels, Belgium. An extension until June 30 would not require the UK to take part in the EU elections; moreover, even if such extension were granted, there would be no guarantee that the EU would-again-provide additional reinsurances, nor that Prime Minister May could secure a majority to back the deal in the UK Parliament, as another vote in the UK Parliament on the deal rejected on March 12 is scheduled for March 19. If the deal is adopted, the extension could be granted until June 30, but if it is not, the extension itself by the EU as well as the length of the extension is in question. Finally, snap UK elections cannot be ruled out although another referendum was ruled out by the UK Parliament in a vote on March 14. The outcome is anyone’s guess.

New Information on Enforcement
INTA’s Brexit Cross-Committee Task Force organized an event on enforcement issues related to Brexit in London, United Kingdom, on February 25. The event, which drew more than 30 attendees, included representatives of the UK Intellectual Property Office (UKIPO), Her Majesty’s Revenues and Customs (HMRC), and the Department to Exit the European Union (DexEU).Among the most notable points discussed, the UK authorities stressed that they are currently working on replacing the Anti-Counterfeit and Anti-Piracy System (COPIS) with their own ad hoc system. They are also working on putting the Regulation (EU) No. 608/2013 concerning customs enforcement of IP rights in the form of a UK statutory instrument “as close as we can,” according to HMRC. On the validity of applications for action (AFAs), their approach is two-fold:

If a company applied for an EU AFA in the UK before Brexit, the records will be introduced automatically in the new UK system. The UK AFA will be valid in the UK for the duration of its initial term. The company will still have to apply for an AFA to cover the remaining EU27 members.
AFAs in EU27 which apply to multiple EU members states, including the UK, will also need to apply for a new UK AFA. The UK does not have the detailed data and is not able to copy those AFAs from COPIS.

On exhaustion, in case of a “no-deal” scenario, the UK will have a unilateral European Economic Area exhaustion. If there is no reciprocation by the EU, the UK will not change its “no-deal” position in the short term (that is, the EU position will not impact the UK proposed one). If the withdrawal agreement is agreed upon, the status quo will remain during the transition period; afterward, the UK can give no commitment, as each party will choose its own regime. The EU-UK political declaration is neutral on this subject.

INTA is considering a meeting with the UK Ministry of Justice, notably to discuss further issues pertaining to jurisdictions and recognition of judgments.

For its part, the EUIPO published a link on its webpage on March 8 entitled “Impact of the UK’s withdrawal from the EU – EUTMs and RCDs,” which includes all of the Office’s communication and documents on Brexit so far.

Stay updated on Brexit by visiting our topic portal.

INTA Comments on EUIPO Strategic Plan 2025
INTA has provided input on the first phase of the consultation on the EUIPO Strategic Plan 2025 (SP2025), which lays out the EUIPO’s key priorities for 2021‒2025. In releasing the SP2025, EUIPO said “an important aim will be to help companies to gain full benefit from their innovation and creativity, whether in Europe or the global marketplace, having regard to technological advances shaping business models.”

INTA submitted a letter on February 28, which highlighted six main recommendations: SP2025 should clearly affirm that users are at the heart of EUIPO’s strategy and should be structured accordingly.
Reassurance should be provided that the EUIPO will focus on its core task of registering and administering trademarks and designs.
Delivering quality services for trademark and designs users should be a priority.
SP2025 should clarify that the EUIPO will embrace technology while remaining human.
Users should be consulted on the strategic directions for the European Observatory on Infringements of Intellectual Property Rights (the Observatory), a separate entity hosted by EUIPO, up to 2025. SP2025 should therefore address the Observatory, clearly distinguishing its role and competences from those of EUIPO.
Preserving the collegial approach of the Observatory and the quality of its network is essential.

Further, INTA submitted detailed comments on each of the SP2025’s strategic drivers: (1) Interconnected, Effective, and Reliable IP System; (2) Customer-Centric IP Services; and (3) Dynamic Organisational Skillsets and Effective Support to Operations. INTA will continue monitoring and contributing to the upcoming phases of the consultation on SP2025.

SP2025 was discussed during the Observatory’s private stakeholders’ meeting in Brussels, Belgium, on March 5. Among the other most notable points discussed:

Observatory’s New Expert Groups: The Observatory is moving forward in the following areas: adopting a new working structure to ensure progress on its activities; retaining existing working groups (except legal and international); and creating so-called expert groups dedicated to legal, outreach, international cooperation, impact of technology, small and medium-sized enterprises, and cooperation with intermediaries. It selected a total of 113 experts, including many INTA members in all of the expert groups except the one focused on the impact of technology. The expert groups will meet for the first time April 8‒11 to discuss concrete projects to be pursued within each group.
Authenticities Project: Building upon an existing project which provides certification to cities active in the fight against counterfeiting, the objective is to create a strong core of five authenticities in 2019, and then expand upon that to 15 in 2020, 15 in 2021, and 10 in 2022.
EU IP Rights Enforcement Platform Project: A one-stop webpage providing access to enforcement tools-Enforcement Data Base (EDB) and Anti-Counterfeiting Rapid Intelligence System for rights holders, and EDB and Anti-Counterfeiting Intelligence Support Tool for public authorities will go live by June 12‒13. The EDB will be revamped, and will provide an e-application action module by early 2021.

Join Us: INTA Events and Receptions Across Europe
In the first half of March, INTA held educational roundtables and pre‒Annual Meeting Receptions (featuring roundtables, too) in Geneva, Switzerland; Zurich, Switzerland; and Warsaw, Poland. Coming up later this month, INTA events will take place in Edinburgh, Scotland; Vienna, Austria; and again in Zurich, Switzerland. More events are planned for the near future.

These events are free of charge, kindly hosted by volunteer members, and a great way for you and your team to keep updated on trademark law and practice and to network with local members. It is also a good opportunity for you to introduce your colleagues and clients to INTA!

Keep a regular eye on our calendar of events here.

What’s Next in Europe: Important Dates to Keep in Mind

March 18‒19: 7th plenary session of the OECD Task Force on Countering Illicit Trade-Paris, France
March 20: Deadline for input to the French public consultation on the transposition of the EU Trademark Directive
March 20‒21:14th Liaison Meeting on Cooperation ‒ EUIPO-Alicante, Spain
March 23: The legislation transposing the EU trademark Directive to enter into force
March 29: Brexit day
March 31: Deadline for input to the public consultation on the evaluation of EU legislation on design protection
April 2‒3: 21st Liaison Meeting on Trade Marks ‒ EUIPO-Alicante, Spain
April 4‒5: 26th User Group Meeting ‒ EUIPO-Alicante, Spain
April 8‒11: The Observatory Working Groups and Expert Groups meetings
May 23‒26: European elections
End of May‒Early June (date to be confirmed): Joint European Commission’s DG TAXUD-EU Observatory Customs Seminar in the presence of China Customs-Alicante, Spain
June 12‒13: EUIPO International Forum on IP Enforcement-Paris, France
June 18‒19: Europol IP Crime Conference-Malaga, Spain

INTA’s Europe Representative Office, based in Brussels, Belgium, represents the Association’s 1,800+ members across Europe (including those in EU and non-EU member states, and Russia and the Commonwealth of Independent States). Working in collaboration with staff at INTA’s headquarters in New York City, the Europe Representative Office leads the Association’s policy, membership, marketing, and communications initiatives throughout the region. To learn more about INTA’s activities in Europe, please contact INTA Chief Europe Representative Officer Hélène Nicora at [email protected] and follow us on Twitter at @INTABrussels.

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.