EU Commission Paper on IP and Brexit

September 2017

The European Commission Brexit Task Force has published its Position Paper on IP rights and Brexit here.  The paper contains the main principles of the EU Commission, albeit one player in the Brexit process, in respect of Brexit negotiations and specifically mentions rights having “unitary character in the Union” like the EU Trade Mark and Design right, as well as geographical indications, and applications for these rights as well as SPCs and database rights, protected under EU Regulations.  It recognises the uncertainty around the future of existing “EU” IP rights in the UK for rights holders in both the UK and the remaining EU Member States.  

The Paper makes it clear any existing “EU” IP rights in the UK should not be compromised:

“The holder of any intellectual property right having unitary character within the Union and granted before the withdrawal date should, after that date, be recognised as the holder of an enforceable intellectual property right in relation to the United Kingdom territory, comparable to the right provided by Union law – if need be on the basis of specific domestic legislation to be introduced.”

This is a position which the UK government will no doubt agree with, and rights holders will be supportive of.

However, the main question now to be answered is how will the objectives of the paper be achieved and implemented before March 2019 so that there is a smooth and well-thought process in place that can start then with no loss of IP rights.  This EU paper gives no indication that the EU could be amenable, as part of any transition deal, for the UK to remain covered by EU rights, like the EUTM for example, for a period after March 2019, whilst any transfer process is finalised.   Stating that the “United Kingdom puts in place, as of the withdrawal date, the necessary domestic legislation providing for their continued protection.” And that “Such protection should be comparable to that provided by Union law” may be easier said than done when there no domestic legislation in the United Kingdom for many of these rights, or their post Brexit equivalent.

However, although not clear, the fact that there is no mention of any plans for the EU Trade Mark Regulation to be amended, and given the liberal use of the word ‘unitary’ throughout the Position Paper would suggest that the Commission envisages that the EUTM will not cover the UK post Brexit, and that domestic legislation envisaged by the Commission in the UK would be a recognition under UK trade mark law of corresponding rights for previous EUTM registration holders, most notably via ‘converted’ EUTMs into national UK Trade Mark Registrations.

It does seem that the Commission envisages that whatever conversion or recognition process is put in place is free to business and administratively simple reading this statement in the Paper:

“The implementation of this principle should not result in financial costs for the holders of intellectual property rights having unitary character within the Union. Any related administrative burden for such holders should be kept to a strict minimum.”

Again this would appear a position to the UK Government is likely to agree with, but as ever the devil may be in the detail.

This update was prepared by HGF Partner Lee Curtis and Professional support Director Estelle Senior.  If you would like further advice on this or any other matter, please contact Lee or Estelle. Alternatively, you can contact your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.