Trevor Little

  • European Commission outlines vision for future treatment of EU trademarks 
  • Post-Brexit UK protection of existing rights with unitary character envisioned
  • Call for continued protection of geographical indications could prove divisive

The European Commission has released its position paper on the treatment of intellectual property rights after the United Kingdom completes its exit from the European Union. While a short document, it provides important insights into the trademarks regime that EU negotiators want to negotiate towards. There are aspects, however, that could prove divisive.

The five-page document, Position paper transmitted to EU27 on Intellectual property rights (including geographical indications), provides a high level perspective on the targeted treatment of IP in the final withdrawal agreement. As its first principle, it states that the final agreement should ensure that “the holder of any intellectual property right having unitary character within the Union and granted before the withdrawal date should, after that date, be recognised as the holder of an enforceable intellectual property right in relation to the United Kingdom territory comparable to the right provided by Union law – if need be on the basis of specific domestic legislation to be introduced”.

If agreed to – and that is, of course, a big if – it would mean that holders of existing European trademarks would maintain protection in the UK (likely leading to a spike in registrations at the EUIPO in the run-up to any cut-off date as applicants try to secure wider protection than would be afforded to marks registered post-withdrawal).

Drilling down, it adds that the implementation of this principle should also include the determination of renewal dates, the respect of priority and seniority principles, and “the adaptation of 'genuine use' requirements and 'reputation' rules to the specific situation under consideration”. On the latter, for example, it states that the recognition of a trademark in the United Kingdom should not be refused on the ground that the equivalent EUTM had not been put into genuine use in the territory of the UK before the withdrawal date. Importantly for rights holders, the commission adds that the implementation of the above should not result in financial costs for the holders of rights having unitary character within the EU.

Elsewhere, the document proposes that procedure-related rights (for example, rights of priority) in relation to applications for rights having unitary character within the EU still pending on the withdrawal date are not lost when applying for an equivalent intellectual property right in the UK. Additionally, applications for supplementary protection certificates (or for the extensions of their duration) in the UK, which were submitted and ongoing before the withdrawal date, should be completed in accordance with the conditions set out in EU law.

Finally, the position paper states that rights which were exhausted in the EU before the withdrawal date should subsequently remain exhausted in both the European Union and UK territories. As an example, it says that, “in relation to trademarks, the rights conferred by the trademark to prohibit its use in relation to a good are exhausted when such good (to which the trademark is related) was put on the market in the Union before the withdrawal date by the proprietor of the trademark or with the proprietor's consent”.

As the title of the report suggests, geographical indications (GIs) are a specific focus of the document. Considering GIs, protected designations of origin and other protected terms in relation to agricultural products protected under EU law before the withdrawal date, the paper states that the principle of unitary character would “imply that the United Kingdom puts in place, as of the withdrawal date, the necessary domestic legislation providing for their continued protection. Such protection should be comparable to that provided by Union law”.

That GIs merit specific mention should come as no surprise. The EUIPO’s Infringement of protected geographical indications for wine, spirits, agricultural products and foodstuffs in the European Union, published last year, noted that the value of production of agricultural products protected by EU GI schemes in 2010 was €54bn, with GI production representing 5.7% of the total of the food and drink industry. In February, reports emerged of the European Commission’s concern that British companies could violate the protection currently afforded to GIs, leading to a situation where English sparkling wine is branded as English champagne, or ham as English Parma ham (it was also noted that, at the same time, British products would remain protected in Europe unless the EU commission repeals the protections).

Today’s position paper therefore paces this possible conundrum front and centre. How it will play out remains to be seen – it will certainly be a divisive topic. If the UK does not agree with this approach, and the repeal of existing protection for UK products becomes a tangible threat, there will be interests that lobby for reciprocal recognition – specifically those UK producers currently utilising the differentiation premium that geographical indications afford. For instance, in the wake of last year’s UK referendum on EU membership, the Cornish Pasty Association was quick to expressed its disappointment on the result, and vowed to continue “pressing the government for clarity on plans to protect food names outside membership of the EU”. More recently, the Scotch Whiskey Association has also called for “robust legal protection of Scotch Whisky in the UK, EU, and global markets”, stating: “We recommend mutual recognition of UK and EU GIs, as well as the early creation of a UK GI register.”

However, as noted in The Guardian, the call to legislate for the “continued protection” of special foods in a bid to protect them from “British copycats” is “likely to inflame Brexiters”. Our sister title IAM also notes that such legislation would also complicate the UK’s negotiations with the United States on a possible free trade agreement.

As its title suggests, this is a document that represents the vision of one of two negotiating parties. The UK has yet to outline its own position and the final negotiated reality could be very different. The publication of the document is a welcome development, though, as it confirms the blueprint the European negotiators want to build on – and finally places intellectual property into the Brexit discussions.

The practical impact of BREXIT on trademarks will be the subject of discussion at this year’s Managing Trademark Assets, held in Chicago on October 17. For more information, including details on how to save $100 on the standard delegate rate, visit the event website here.


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