INTA Analyzes IP Provisions in Post-Brexit EU-UK Agreement

Published: June 2, 2021

INTA’s Brexit Task Force has produced an in-depth analysis of the EU‒UK Trade and Cooperation Agreement’s provisions on intellectual property (IP) following the United Kingdom’s departure from the regional group. The analysis focuses on the Agreement’s 57 articles on IP matters.

Brexit was a “saga” that kept a lot of people in anticipation of the outcome following the June 2016 referendum approving the UK’s departure from the European Union. Like all good sagas, it had its “cliffhangers”: a deal reached but not approved, snap elections, and leadership changes. It was also defined by regular “make or break” moments. It certainly kept people captivated but mostly in doubt up to the end.

The final result came at the eleventh hour with a deal reached between the two parties on December 31, 2020, paving the way for the UK to officially and entirely exit the EU on December 31, 2021, marking the end of the nearly five-year Brexit saga. The Agreement was applied provisionally as of January 1, 2021, and it entered into force on May 1, 2021.

Ultimately, the “no deal” exit scenario—feared until the last minute, with businesses preparing contingencies—did not occur. The parties secured, on December 24, the Trade and Cooperation Agreement, a 1,449-page treaty governing the “future relationship” between the two sides.

The Agreement covers IP in Part II, Title V, Heading One “Trade.”

Since the Agreement was announced, the Brexit Task Force has been extensively analyzing the IP provisions. The provisions range from designs to trademarks, plant varieties to copyright, and enforcement to geographical indications, among others.

In particular, the Task Force’s 62-page analysis lays out each provision and explains how it fits with existing UK and EU laws and agreements, identifying whether any amendments will be needed to bring existing laws into compliance. It also specifies how the provisions fit with INTA’s Brexit position.

For instance, the analysis in Article IP. 20, “Rights conferred by a trademark,” lays out the new provision, then explains its “consistency with UK and EU legislation”:

Article IP.20(1) is provided for in Article 9(2)(a) and (b) of the EUTMR and Sections 10(1) and (2) of the UKTMA. Therefore, no amendments are required to UK or EU legislation. However, infringement as provided in Article 9(2)(c) of the EUTMR and Section 10(3) of the UKTMA where the registered trademark has a reputation and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark) is not provided for in Article IP.20(1). This is unlikely to indicate an intention to weaken protection for reputed marks; rather to focus on the essential of infringement. Article IP.20(2) and (3) is provided for in Article 9(4) of the EUTMR and Section 10A of the UKTMA. Therefore, no amendments are required to UK or EU legislation.

Further, the analysis notes INTA’s Brexit position, namely, “INTA would not support a lesser degree of protection for trademarks enjoying a reputation.”

The Agreement may mark the end of the Brexit saga, but its interpretation and implementation by both parties should continue to keep the issue alive for quite some time.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

© 2021 International Trademark Association