In a welcome attempt to reduce uncertainty, the European Commission has published a position paper on how IP rights should be treated following Brexit.
As a general principle, the Commission proposes 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 apply to EU trade marks, registered and unregistered designs, plant varieties and geographical indications.
For unitary rights granted before the date of Brexit, they should automatically be recognised, and continue to be enforceable, in the UK in accordance with EU law following Brexit. This implies that any necessary domestic legislation should be introduced in the UK prior to Brexit to achieve this goal. For example, the Commission notes that there is currently no domestic legislation in the UK on the protection of geographic indications.
Further, the automatic transfer of unitary IP rights should not result in financial costs for rights holders, and any administrative burden should be kept to a minimum.
For unitary rights that are pending at the date of Brexit, the Commission proposes that an applicant should be entitled to the priority date of the original EU application when applying for an equivalent UK IP right following Brexit. Importantly, this suggests that pending rights will not be automatically transferred in the same way that is proposed for granted rights.
The paper also discusses other IP rights. With regard to UK SPCs, SPC applications or applications for paediatric extensions that are pending on the date of Brexit, they should be concluded in accordance with EU law. Further, databases that are protected under EU law prior to Brexit should continue to be protected in the UK and in the EU27 following Brexit.
Regarding exhaustion, the Commission proposes that IP rights which were exhausted in the EU prior to Brexit should remain exhausted in both the EU27 and the UK during and following Brexit.
Finally, the Commission does not mention the unitary patent in its paper. However, if the unitary patent system were up and running prior to Brexit, unitary patents would probably be treated in the same way as the unitary IP rights discussed above.
It is to be hoped that we will see a corresponding paper from the UK soon, giving us a clearer picture of what will happen to IP rights during and following Brexit.
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