Post-Brexit protection of IP rights
A recent paper from the European Commission sets out principles for the continued protection of intellectual property rights following Brexit.

On 7th September 2017, the European Commission published a position paper setting out high-level principles on IP rights that will be presented to the UK government during the Brexit negotiations.

The Commission’s guiding principle on pan-European Union (EU) rights is that “the protection enjoyed in the United Kingdom on the basis of Union law by both UK and EU 27 holders of intellectual property rights having unitary character within the Union before the withdrawal date is not undermined by the withdrawal of the United Kingdom from the European Union”. This would cover EU trade marks, registered and unregistered Community designs, geographical indications and Community plant variety rights. This would also likely be the Commission’s position for Unitary Patents, if and when these become available before Brexit is completed.

For such rights granted prior to Brexit, the Commission proposes that an equivalent, enforceable UK right should be granted automatically. That UK right would retain the priority date of the original EU right and, specifically in respect of EU trade marks, there should be adaptation of provisions on non-use and reputation. The Commission proposes that this should be implemented at no cost to the right holder and with minimal administrative requirements.

For such rights pending at the date of Brexit, the Commission proposes that the applicant should be entitled to retain the priority date of the original pan-EU application when applying for an equivalent UK right following Brexit. It is notable that there is no proposal for an automatic transfer of pending rights in the same way that is suggested for granted rights.

In relation to other rights, the paper proposes that applications for supplementary protection certificates (SPCs), or for the extension of their duration, filed in the UK, and ongoing at Brexit, are completed in accordance with EU law. Furthermore, database rights, protected under EU law prior to Brexit, should continue to enjoy protection in the UK and EU 27 following Brexit.

With regards to the exhaustion of rights, the paper proposes that IP rights, which are exhausted in the EU prior to Brexit, remain exhausted post-Brexit in both the EU and the UK.

This is a welcome attempt to begin reducing uncertainty around the effect of Brexit for IP. While the UK government has not yet published its position on IP, it would be surprising if there was significant divergence from the Commission’s principles bearing in mind the UK’s commitment to providing certainty and continuity upon Brexit (reported in April here). Commenting on the paper, the President of the Chartered Institute of Trade Mark Attorneys, (which represents the UK profession) said: “This European Commission paper in many respects mirrors CITMA’s position paper and is a positive step towards ensuring current EU registered trade mark and design rights continue to cover and be enforceable in the UK post-Brexit, with minimum cost to IP owners.”