Marques 2018: Brexit update reveals hope despite uncertainties
“We were hoping, and we’re still hoping, that a final [Brexit] deal will be made,” said Roland Mallinson, partner at Taylor Wessing, in an update on Brexit at the 2018 Marques Annual Conference in Paris.
In his presentation, delivered on Friday, September 21, Mallinson summarised the progress that has been made in the context of IP and Brexit in the last six months.
He explained that the draft withdrawal agreement, dated March 19, suggested that EU trademarks (EUTMs) and registered Community designs would be split into a comparable right in the UK after Brexit, although it did not specify whether this would be for free.
This issue was later addressed by the UK Parliament.
The next major Brexit development happened on June 26, Mallinson said, when the Great Repeal Act received Royal Assent and became law in the UK. The act repealed the 1972 legislation that brought the UK into the EU.
Shortly after, the UK government expressed a desire to work from a “common rulebook” in the context of goods and the EU, “but what a common rulebook for goods is, is anyone’s guess,” Mallinson claimed.
He added that the UK government’s proposal also introduced the concept of “joint jurisdiction”, whereby the UK would refer matters to the Court of Justice of the European Union and “due regard” would be taken of the outcome.
Under this interpretation, the UK would not necessarily be bound by the decision.
On July 12, the UK government released a White Paper to share its Brexit position, but this included little information on IP. The main IP takeaway, in Mallinson’s view, was the UK’s plans to introduce its own geographical indication scheme post-Brexit.
The following week, on July 19, a junior parliamentarian released a statement which promised that EUTMs would be converted to UK trademarks for free after Brexit.
This was the first public mention of such a notion, Mallinson explained, and was “seemingly unilateral and not contingent on there being a withdrawal agreement”.
Mallinson said that the free conversion of EUTMs was supported by a statement made by the UK Intellectual Property Office on July 23, but the office said that this was subject to there being a withdrawal agreement.
He added that the UK government has repeatedly said that maximum clarity and legal certainty are its objectives as we approach Brexit, yet the recent assurances about the fate of EUTMs were rather unclear.
In addition to the White Paper, the UK government has released two of three planned batches of technical papers.
Although the papers have not been IP-heavy, one document did indicate that the UK government planned to adopt the pan-European exhaustion of rights regime in its current form. This would aim to provide continuity in the areas of medicines and medical devices.
Mallinson said that this position is expected to be confirmed for other sectors.
To summarise, he said, there are still many unknowns when it comes to IP in the UK and the EU post-Brexit.
Mallinson’s closing remark reflected the continuing uncertainties surrounding Brexit: “If you do have questions, I promise I don’t have the answers!”
The 2018 Marques Annual Conference took place in Paris between September 18 and September 21.
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