The Future EU-UK Relationship: The EU Sets Out Its Stall

Published: June 1, 2020

Richard Plaistowe Mills & Reeve LLP Cambridge, UK

Now that the Brexit official date (January 31, 2020) has passed and the transition period has begun and will run until December 31, 2020 (if no extension is asked), the European Union and the United Kingdom are putting all their forces into agreeing on the “future relationship” post-Brexit. Negotiations began with a first round March 1‒2, followed by a second (April 20‒24), and a third (May 11‒15) via visio-conference given the COVID-19 pandemic. A fourth round is due in the week of June 1.

The EU has made its draft legal text on the “future relationship” agreement public (the EU Text). The EU Text notably includes a dedicated Title IX on Intellectual Property (pages 140‒163), which contains the following detailed chapters:

  1. General provisions—covering among other matters, international agreements and exhaustion;
  2. Standards concerning intellectual property (IP) rights—covering copyright and related rights, trademarks, designs, geographical indications (GIs), patents, protection of undisclosed information, and plant varieties; and
  3. Enforcement of IP rights—covering civil and administrative enforcement and border enforcement.

We outline below how the EU Text impacts the issues of most concern to INTA members, notably based on INTA’s position papers on exhaustion of rights, International Registration, and enforcement.

1. Trademarks and Designs

The Withdrawal Agreement (the “divorce” agreement) dealt with most of the concerns raised by brand owners and IP professionals in relation to the continued protection in the UK of EU trademarks and Community designs.

The Articles of the EU Text dealing with trademarks (Article IP.18 to Article IP.25) and designs (Article IP.26 to Article IP.30) require the UK and the EU to include, in their trademark and designs legislation, provisions which are, for the most part, already in that legislation, which will not need to be amended (except as noted below).  

If the EU Text is agreed upon, both the UK and the EU will not be able to make future amendments to their trademarks and designs legislation that are inconsistent with the relevant Articles of the EU Text.

There are two articles worth noting:

  • Article IP.28 (Protection of unregistered designs)

This article requires the UK to provide for a domestic equivalent of the unregistered Community design right. (The UK Designs and International Trade Marks [Amendment, etc.] [EU Exit] Regulations 2019 [not yet in effect] have already provided for this right, named the “supplementary unregistered design”).

It appears from this article that this protection will commence in the UK or the EU only from the date it was first made available to the public in that territory. It would have appeared preferable to provide that protection will commence in both the UK and the EU from the date on which the design was first made available to the public in either the UK or the EU.

Also, it is not clear what effect there will be on the validity of the design if it has been previously made available to the public in another territory.

  • Article IP.30 (Relationship to copyright)

This article provides that a design, including an unregistered design, shall also be eligible for protection under the law of copyright of the UK or EU as from the date on which the design was created or fixed in any form. 

However, this is not consistent with Section 51(1) of the UK Copyright, Designs and Patents Act 1988. This provides that it is not an infringement of any copyright in a design document or model recording, or embodying a design for anything other than an artistic work or a typeface, to make an article to the design or to copy an article made to the design. If this article is agreed, the UK will have to amend or delete this section.

2. Geographical Indications

Article IP.31 to Article IP.38 of the EU Text sets out in some detail the provisions that must be contained in UK and EU legislation relating to GIs. 
There are three dedicated annexes to the EU Text:

  • Annex IP-A: a list of UK and EU domestic legislation (there is none yet listed for the UK);
  • Annex IP-B: criteria to be included in the opposition procedure relating to GIs; and
  • Annex IP-C: lists of GIs for EU products to be protected in the UK, and lists of GIs for UK products to be protected in the EU (these lists have not yet been populated).

The UK has not yet published its proposed domestic GIs scheme but has stressed in the government position paper dated February 2020 that “there are different ways of proceeding on Geographical Indications (GIs) and the UK will keep its approach under review as negotiations with the EU and other trading partners progress. Any agreement on GIs must respect the rights of both parties to set their own rules on GIs and the future directions of their respective schemes.”  

It is therefore not clear to what extent the UK will agree to these proposed articles and to what extent UK GIs legislation will be harmonized with EU GIs legislation.

3. Enforcement and Recognition of Judgments

The EU Text does not deal with the recognition and enforceability—after the end of the Brexit transition period (the “Transition End”)—in both the UK and EU, of decisions of EU Trade Mark and Community design courts (including those sitting in the UK) issued before Transition End or, in proceedings ongoing at Transition End, issued after Transition End. 

The provisions of the EU Text dealing with Civil and Administrative Enforcement (Article IP.47 to Article IP.60), deal only with domestic procedure which the UK and the EU will need to implement. A detailed review of these will form the subject of a separate update.  

4. Customs

With regard to border measures and anticounterfeiting actions, the provisions of the EU Text dealing with border enforcement (Articles IP.61 and IP.62) stipulate only the internal procedures that the UK and the EU must adopt or maintain.  

The following should be noted:

  • Harmonization of the proposed procedures is not required, they must simply meet the stipulated criteria.  
  • The provisions cover “suspected goods,” namely goods suspected of infringing trademarks, copyrights and related rights, GIs, patents, utility models, industrial designs, topographies of integrated circuits, and plant variety rights (Article IP.61(1)).  
  • No provision is made for the preservation of the validity of granted Applications for Action (AFAs) or for keeping existing EU AFAs in place in the UK and EU27 until renewal.   
  • Customs authorities will not charge a fee (Article IP.61(3)).  
  • Provision appears to be made for a simplified procedure (Article IP.61(8)) and a small consignments procedure (Article IP.61(9)).

There is no express provision in the EU Text that the UK Border Agency should continue to have access to EU AFAs and the Enforcement Database (EDB) of the European Observatory for Infringements of Intellectual Property Rights so it can continue to cooperate with the EU27 authorities in preventing IP infringing goods at the border.  

With regard to co-operation on customs matters, the EU Text provides as follows: 

  • Article IP.61(11): the UK and EU shall allow its customs authorities to maintain a regular dialogue and promote cooperation with the relevant stakeholders and with other authorities involved in the enforcement of IP rights.
  • Article IP.61(12): the UK and EU shall cooperate with respect to international trade in suspected goods (in particular, they shall share information on trade in suspected goods affecting the other).
  • Article IP.61(13): the Protocol on Mutual Administrative Assistance in Customs Matters shall be applicable with regard to breaches of legislation on IP rights for the enforcement of which the customs authorities of the EU or UK are competent.

The UK has not yet set out its detailed position, but the following should be noted:

  • In the government position paper dated February 2020, it stated that the Comprehensive Free Trade Agreement should contain an annex which would “enable the parties to work together while upholding their respective customs regimes, to protect revenue and combat criminality through efficient and reciprocal exchange of information and mutual assistance across customs matters” and which would “reflect similar agreements the EU has negotiated with partners such as New Zealand and Japan.”
  • In her letter responding to the “IP Stable Group” (UK associations of IP professionals of which INTA is part) dated April 27, 2020, UK IP Minister Amanda Solloway stated, “Cooperation on enforcement of IP rights is essential to tackle the global problem of counterfeiting. The Government plans to maintain close links and collaboration on enforcement of IP rights with international partners to address the multiple and growing challenges posed by IP infringement. Should there be any substantive policy changes, we will of course consider the input of all stakeholders on this important issue as we would during normal policy development.”

5. Exhaustion of Rights

Article IP.5 (Exhaustion) of the EU Text provides that each party shall provide for a regime of national or regional exhaustion of IP rights. International exhaustion is not contemplated and the UK cannot, in the long term, implement a regional exhaustion regime if it is leaving the EU Single Market and Customs Union.  

However, in her abovementioned letter, Minister Solloway stated that “the Government is considering its position on exhaustion of IP rights. We understand that many stakeholders have told the IPO that they believe maintaining the status quo is desirable. What happens after the transition period will be the subject of discussions between the UK and the EU, but ultimately for the UK Government to decide based on analysis and consultation. We will ensure you are informed of any consultation on this issue.”

This does not, from the side of the UK, close the door to the possibility of an international exhaustion regime.

6. International Registration

Article IP.4 of the EU Text provides that the UK and EU shall ensure that the procedures provided under the following international agreements are available in its territory:

  • The Protocol related to the Madrid Agreement concerning the International Registration of Marks adopted at Madrid on June 27, 1889, as amended on October 3, 2006, and on November 12, 2007;  and
  • The Geneva Act to the Hague Agreement Concerning the International Registration of Industrial Designs of July 2, 1999.

7. Right of Representation

The EU Text does not deal with rights of representation before the EU Intellectual Property Office or the UK Intellectual Property Office.

8. Collaboration

Article IP.63 of the EU Text provides that the UK and EU shall cooperate with a view to supporting implementation of the commitments and obligations undertaken in the IP provisions of the EU Text, including the following activities:

  • Exchange of information on the legal framework concerning IP rights and relevant rules of protection and enforcement;
  • Exchange of experience on legislative progress, on the enforcement of IP rights and on enforcement at central and sub-central levels by customs, police, administrative, and judiciary bodies;
  • Coordination to prevent exports of counterfeit goods, including with other countries;
  • Technical assistance, capacity building, exchange and training of personnel;
  • Protection and defense of IP rights and the dissemination of information in this regard in, among others, business circles and civil society;
  • Public awareness of consumers and rights holders; 
  • Enhancement of institutional cooperation, particularly between the IP offices;
  • Awareness promotion and education of the general public on policies concerning the protection and enforcement of IP rights;
  • Promotion of protection and enforcement of IP rights with public-private collaboration involving small and medium-size enterprises;
  • Formulation of effective strategies to identify audiences and communication programs to increase consumer and media awareness on the impact of IP rights violations, including the risk to health and safety and the connection to organized crime.

It is not clear what the details of this will be, or how this will be implemented.

INTA’s Brexit Task Force will continue to monitor the situation and advocate both EU and UK negotiators for maximizing IP protection. More on IP and Brexit and the work of the INTA Brexit Task Force can be found here.

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.

© 2020 International Trademark Association