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13 July 2018Patents

Mixed IP reaction to Brexit White Paper

The UK government yesterday published its latest White Paper on Brexit, but the document leaves several IP questions unanswered, according to lawyers.

The 104-page document, titled “The Future Relationship Between the UK and the EU”, recognises that IP plays “an essential part in encouraging the universal benefits of innovation and creativity, as well as protecting the reputation of products and services”.

Kate O’Rourke, senior counsel at Charles Russell Speechlys, said this is encouraging.

Although the White Paper fails to address the future of trademarks, O’Rourke noted that it does make reference to forming an agreement on a “common rulebook” which “could imply that there may be continued harmonisation on trademarks and designs”.

Speaking in her capacity as chair of the Chartered Institute of Trade Mark Attorneys’ Brexit committee, O’Rourke said it is vital that there is legal certainty on the future of EU trademarks (EUTMs) and registered Community designs (RCDs) in the UK.

She noted that the Draft Withdrawal Agreement, released in March, demonstrated the UK government’s intention to grant all EUTM and RCD owners an equivalent UK right at the end of the Brexit transition period.

A further unknown is whether UK chartered trademark attorneys will continue to be able to represent clients at the European Union Intellectual Property Office after Brexit, O’Rourke said. This was not clarified in the most recent White Paper.

The future of geographical indications (GIs) is briefly addressed by the white paper: “The UK will be establishing its own GI scheme after exit, consistent with the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property (TRIPS).”

Massimo Vittori, managing director of oriGIn, the global alliance of GIs, said the paragraphs detailing the future of GIs in the UK “go in the right direction, both in terms of recognition of the key GI principles and characteristics of the future UK system to protect GIs”.

For example, the white paper said the UK is committed to going “beyond the requirements of TRIPS”, saying that the UK will “provide a clear and simple set of rules on GIs, and continuous protection for UK GIs in the UK”.

O’Rourke said: “It is certainly very welcome to see confirmation that a new UK GI scheme will be established, although it would be more welcome if there was a commitment to the continuation of protection of existing GIs.”

She said the paper’s reference to giving continuous protection for UK GIs in the UK will “obviously worry” non-UK businesses.

A paper published by oriGIn in March emphasised the need to reduce the legal uncertainty for GI beneficiaries as well as consumers in the UK and the EU in the wake of Brexit.

The paper noted that several UK GIs are protected in foreign countries via bilateral agreements with the EU, and “this issue will have to be also addressed by the Brexit negotiations”.

Also, oriGIn urged the UK to ensure the maximum retention of rights for GI beneficiaries, equal to the level of protection currently enjoyed, with minimal burden or cost for GI beneficiaries.

O’Rourke noted that “as it is, we do not know if all of the existing GIs will need to be refiled in the UK—which would incur costs and administration for their owners”.

The UK’s plan to protect GIs appears to be going in the right direction, but “the devil will be in the details of the new system”, Vittori said.

Although there are many unknowns, Tim Powell, partner at Powell Gilbert, claimed the white paper has brought some clarity to the UK’s position on the Unified Patent Court (UPC): “Despite a number of uncertainties, it certainly looks like the UK intends to be a member of the UPC.”

A White Paper released in 2017 indicated that the UK would “take control of our own affairs” and look to leave the UPC Agreement as part of its exit from the EU, which sparked concern among practitioners.

The UK has since ratified the UPC Agreement, in April 2018.

The White Paper released yesterday recognises the “long history of European cooperation on patents”, and says that “arrangements on future cooperation on IP would provide important protections for right holders, giving them a confident and secure basis from which to operate in and between the UK and the EU”.

According to Powell, the UK government has a “positive” view of the UPC and its ability to “rationalise processes for businesses via a streamlined court system under a single jurisdiction”.

Powell noted that a potential problem with this is that the UPC regime is designed to work on the assumption that its constituent members are member states of the EU, and the UK’s intention to be part of the UPC may face opposition from certain EU member states.

The relationship between the UK and the UPC will need to be settled under the terms of the UK’s withdrawal from the EU, Powell said.

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3 September 2018   The EU’s chief Brexit negotiator Michel Barnier has urged the UK to consider the fate of geographical indications post-Brexit.
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18 September 2018   The Chartered Institute of Patent Attorneys yesterday implored UK Prime Minister Theresa May to include the UK’s continued participation in the EU’s trademarks and designs system post-Brexit in ongoing negotiations.
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