UK law in several key areas of intellectual property has been harmonised with EU law for decades. Certain IP rights (such as trade marks and designs) are also protectable at EU-level as well as at national level.
Both the UK and the EU27 have very high standards for the protection and enforcement of intellectual property. The UK, in particular, has a very long and proud history in the protection and enforcement of IP, and the UK government has indicated its desire to continue to deliver a world class rights granting service, effective enforcement mechanisms, and a strong IP environment to support and encourage economic growth in the UK, despite, or all the more as a result of, Brexit. It recognises that IP underpins the UK’s ambitions on innovation.
The Withdrawal Agreement between the UK and the EU already set in place mechanisms for the continued protection in the UK of unitary/EU-wide IP rights, as well as the resolution of ongoing disputes. IP practitioners had, therefore, a comparatively high degree of clarity leading up to the end of the transition period, unlike other areas of civil and commercial life.
The TCA was always expected to set out – for IP – common minimum standards, going above and beyond the international IP treaties to which the EU and UK are party, without significantly changing anything in law or in practice in relation to IP, either in the EU and the UK. In this respect, it delivered, though not without some areas of doubt over its 23 pages of text focusing on IP.
Some of the key points across the IP rights are as follows:
- Exhaustion: the parties are free to establish their own regimes for the exhaustion of intellectual property rights. This is, in practice, one of the biggest areas of change from the UK’s departure from the EU. As part of the EU’s internal market, the UK applied the EU’s regional exhaustion system, in a kind of “Fortress Europe”. This allowed rights-holders to prevent the import into the entire region of goods which were not already exhausted and which infringed their intellectual property rights. Goods placed on the market in the UK after 1 January 2021 are not considered exhausted for the EU, and parallel imports can be prevented. The UK, in contrast, continues to apply the regional exhaustion regime while it consults and decides (which it is expected to do this year) on which exhaustion regime to follow (i.e. national or international).
- Copyright and trade secrets: these are dealt with in depth in the text and, it is submitted, provide a more certain basis for operators going forward.
- Patents: The TCA says little about patents, focusing on public health and extension of protection periods for patents on medicinal products and on plant protection products.
- Trade marks: The usual FTA provisions regarding trade marks are included, which do not set a particularly high bar but which does not mean that one should expect any race to the bottom to the UK/EU law on trade marks in the near future.
- Designs: Interestingly, given that the EU is embarking on legislative reform to its designs law, it still agreed to nail certain provisions to the mast in the TCA. Nevertheless, in the area of unregistered designs, although the TCA provides for these to be protected from copying for at least 3 years from the date on which the design was “first made available to the public in the territory of the respective party”, it does not expressly deal with the issue of first disclosure in the “other” territory. Assuming no reciprocity is being provided, the first disclosure of a fashion design at London Fashion Week would (likely) not benefit from Unregistered Community Design protection, and the same for the Paris Fashion Week with respect to UK’s new “supplementary unregistered design”.
- Enforcement, cooperation, border measures etc: the TCA establishes a framework for cooperation and exchange of information on infringements/border controls etc, as well as certain minimum standards for enforcement. This is certainly to be welcomed. Nevertheless, one missing area (and which the Law Society has been vocal on at a general level) is on the lack of provisions regarding civil judicial cooperation, also critically important for IP enforcement
Michael Hawkins is a Member of Law Society of England and Wales’ IP Committee