Brexit withdrawal agreement: the IP conundrums around Northern Ireland
Proposals in the European Commission’s Brexit withdrawal agreement could cause confusion in some IP areas, lawyers have told WIPR.
Yesterday, February 28, the Commission released a draft document calling for Northern Ireland to remain in the customs union and parts of the single market if no other solution can be found to prevent a hard border on the island of Ireland.
Lee Curtis, partner at UK-based law firm HGF, said that if this happens, it could have major implications for IP rights.
According to Curtis, it raises questions surrounding jurisdictional reach. If Northern Ireland is in the single market and the customs union, it could remain under the jurisdiction of the Court of Justice of the European Union, a privilege that won’t extend to the rest of the UK.
“Also, you’re going to have a UK trademark registration which is a unitary right covering the whole of the UK and applying to Northern Ireland, which is in a single market with its own free movement of goods,” Curtis told WIPR.
“And then you’re going to have exactly the same trademark registration covering the remainder of the UK, which is outside of that customs union.”
Curtis said he is not aware of any trademark registration in a single trademark system that covers two different custom unions.
“That’s what it will be,” he said, “you will have a customs union for England, Wales and Scotland, and then one covering Northern Ireland which will be joined with the rest of the EU.”
Curtis continued that it could have an impact on the representation rights for UK trademark attorneys. The UK is a political entity which encompasses Northern Ireland, but that country could still be included in the EU single market.
“Under this logic, it should mean that arguably we should maintain representational rights before the EUIPO,” he explained.
Sally Shorthose, partner at Bird & Bird, emphasised that UK Prime Minister Theresa May admitted that such an agreement could cause difficulties for customs officers dealing with goods.
If such an agreement is reached, Shorthose said having Northern Ireland as a “semi-detached” annex could give rise to some exhaustion of rights conundrums.
“It could be inferred that goods which are freely on the EU market could enter the UK through Northern Ireland; according to the EU rules on parallel trade, the rights owner could not prevent such entry.”
However, in theory, rights owners could take action against the same goods once they entered mainland UK.
“This would be an anomalous outcome and I think it unlikely that the UK would hold out for ‘Fortress GB’, but in principle, this could be achieved,” she explained.
Emily Roberts, senior associate at Burges Salmon, also warned that there could be negative consequences.
“The obvious issues relate to exhaustion of rights and counterfeit goods,” she told WIPR.
“This is already a complex area and would be further complicated if Northern Ireland remains within the customs union and single market.”
With regard to counterfeit goods, Roberts explained that there would need to be clarity on when and where customs authorities would have the power to seize goods suspected of infringing brand owners’ IP rights.
“However unlikely this solution appears to be politically, IP owners needs to keep a watching brief on the debate as it unfolds so that their views are heard and their IP strategies remain up to date,” concluded Roberts.
“However, I suspect that, as with all things Brexit, there will be uncertainty for some time yet.”
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