Brexit: With a Draft Deal in Place, IP Owners Await Final Approval

Published: December 1, 2018

Despite much pessimism and growing concern, the European Union (EU) and the United Kingdom (UK) finally succeeded in agreeing on a draft deal on the UK withdrawal agreement (the divorce phase) on November 14.

What It Means for Intellectual Property

Most of Title IV (Arts. 54‒61), which covers intellectual property (IP), was already agreed in principle. Trademarks, designs, databases, and even plant variety rights were addressed and generally agreed upon. The main principle put forward then remains “continued protection in the United Kingdom of registered or granted rights.” Also, the draft agreement kept its regional exhaustion principle whereas “intellectual property rights which were exhausted both in the Union and in the United Kingdom before the end of the transition period under the conditions provided for by Union law shall remain exhausted both in the Union and in the United Kingdom.” The outstanding issues-geographical indications (GIs), registration procedure, and pending applications for supplementary protection certificates in the UK-are now agreed.

  • For GIs, the UK will be granting automatic rights to EU GIs “as from the end of the transition period” until a future relationship is established, although the UK will still have to pass a legislative act to enshrine GI protection into UK law.
  • Registration will be carried out “free of charges” and IP rights holders will “not be required to introduce an application or to undertake any particular administrative procedure,” nor to “have a correspondence address in the United Kingdom in the three years following the end of the transition period.”

A Tricky Path Forward

Does this mean the end of the Brexit process? Far from it. Both the EU (through a Council Summit on November 25 and a Parliament’s vote in January or February 2019) and the UK (through a vote in the UK Parliament on December 11) will have to approve and ratify the “divorce” deal.

On the EU27 side, the approval process is on track and should not face any more hurdles. Indeed, during a Summit on November 25, the EU27 approved the draft agreement on the divorce (a simple majority was required) as well as a political declaration on the setting out the framework for the future relationship between the European Union and the United Kingdom. The latter is a political document (not a legally binding one) for which the unanimity of the EU27 was required. This document provides the basic framework for the future relation, i.e., an “ambitious, broad, deep and flexible partnership” whose nature has yet to be determined (some possibilities include a customs union or a free trade agreement). This partnership should cover “trade and economic cooperation, law enforcement and criminal justice, foreign policy, security and defense and wider areas of cooperation.” It includes a point VII on IP (paragraphs 44 – 47) which notably stress that the parties should provide for IP protection and enforcement “beyond the standards of [TRIPS and WIPO] convention where relevant” as well as the “freedom to establish their own regimes for the exhaustion of intellectual property rights.” Finally, the parties agreed to “establish a mechanism for cooperation and exchange of information on intellectual property issues of mutual interest, such as respective approaches and processes regarding trademarks, designs and patents.” The declaration nonetheless leaves the door open for “areas of cooperation beyond those described in this political declaration.”

The last step at EU level will be the consent-a mere “yes” or “no” without the power to amend-from the European Parliament on the deal.

On the UK side, the process is expected to prove far less simple. UK Prime Minister Theresa May is already facing opposition in her own party, notably with the resignations of several members of her cabinet, including ‘Brexit’ Minister Dominic Raab, over their opposition to the final deal. Moreover, the opposition of her government’s partner to the deal, the Democratic Unionist Party, risks triggering a collapse of her government and snap elections. Finally, Ms. May will have to gather a majority in Parliament while facing a divided Tory party (pro vs. anti-Brexit) as well as an uncompromising Labor opposition, which leaves the fate of the deal uncertain at best.

INTA will keep monitoring the situation and its impact on brands. For the latest updates and more on Brexit, including INTA’s Brexit Brands Toolkit, visit INTA’s dedicated webpage.

INTA’s Advocacy Efforts Result in Inclusion of IP and Anticounterfeiting in EU Parliament Report on Blockchain

On November 20, The International Trade Committee of the European Parliament adopted its own-initiative (non-legislative) report on “Blockchain: a forward looking trade policy.” Thanks to INTA’s advocacy efforts, the report highlights the potential of blockchain to protect IP rights (IPR) and fighting against counterfeits. This adoption by a broad majority is a significant political signal from the EU Parliament to the Commission when and if they choose to legislate on the matter. The report will now have to be approved by the EU Parliament as a whole, either in December or January.

INTA Enhances Relations with French IP Office and Parliament

On October 24, INTA CEO Etienne Sanz de Acedo and INTA Europe Chief Representative Officer Hélène Nicora met in Paris with the recently appointed Director General of the French Institute for Intellectual Property, Pascal Faure, to exchange ideas on the office’s strategy and areas of future cooperation. They also met with French Senator Ronan Le Gleut to discuss anticounterfeiting policy efforts and a potential French bicameral Trademark Caucus in the French Parliament.

Association Gathers Internet Policymakers, Brand Owners, and Stakeholders in Barcelona

On October 22, INTA hosted a reception during the 63rd Public Session of the Internet Corporation for Assigned Names and Numbers (ICANN), which took place in Barcelona, Spain. More than 110 guests were in attendance for this networking event. Guests included officials represented in ICANN’s Governmental Advisory Committee, ICANN staff, members of INTA’s Internet Committee, local INTA members and prospective corporate members, and other stakeholders. Guests were welcomed by Mr. Sanz de Acedo; Lori Schulman, INTA Senior Director for Internet Policy; and Milesh Gordhandas, INTA Advisor, Europe Office.

INTA Remains Active in Raising Awareness on IP Rights in Trade

INTA provided comments ahead of the upcoming EU-Turkey IPR Working Group and will be represented at the Working Group in Ankara, Turkey, by Okan Can (Deris, Turkey) on December 3.

On October 24, INTA Europe Policy Officer Carolina Oliveira attended the IP Transatlantic Working Group, jointly organized by the Transatlantic Business Council (TABC), the European Commission DG TRADE, the U.S. Commerce Department, and the U.S. Trade Representative in Brussels. The discussion focused on how the EU and United States support IP and cooperate with regard to third countries. INTA’s Europe Office also exchanged ideas afterwards with Robert Grant, Director International Policy & Advocacy, Global Innovation Policy Center, U.S. Chamber of Commerce, on the EU-U.S. policy and trade agenda.

Towards Better Data on IP

From October 23‒24, INTA Europe Policy Officer Hadrien Valembois attended the 2018 EUIPO-Organisation for Economic Co-operation and Development (OECD) conference on IP Statistics for Decision-makers in Alicante, Spain. The conference gathered mainly academics and representatives from patent offices and featured a session on trademark and artificial intelligence. The takeaway was that, while data on patents is abundant, data on trademarks is somewhat lacking.

Events on the Belt and Road Initiative, and Small and Medium-Sized Enterprises

INTA will co-host a policy dialogue with the Belgium Association Anti-Counterfeiting (ABAC-BAAN) and the Asian Coalition Against Counterfeiting And Piracy (ACACAP) on December 5 in Brussels, titled “Securing Brand Trust and Security on the ‘One Belt One Road.'”

INTA is working on setting up a small and medium-sized enterprise (SME) workshop together with the European Commission’s DG GROW on December 5 to promote the need for IP protection for SMEs and how to help them protect their IP.

In late November, the INTA Europe Policy Officer traveled to Warsaw to attend the celebration of the Polish Office’s 100th Anniversary (November 26) and the DesignEuropa Award ceremony (November 27).

Last but not least, INTA has announced the dates of the 2019 Europe Conference: February 18‒19, in Paris, France, on the topic “Embracing Change.” Registration opened on November 14. Visit,and join the discussion on Twitter with #INTAParis!

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. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association