Comments for Brexit and intellectual property: new geography and novel nationality issues

Maxime Gillet
Lisa Gius and Maxime Gillet Brexit and intellectual property: new geography and novel nationality issues Territoriality On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? The position paper on IPR of the EC gives a definition of the notion of…
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Lisa Gius and Maxime Gillet
Brexit and intellectual property: new geography and novel nationality issues
Territoriality
On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?
The position paper on IPR of the EC gives a definition of the notion of ‘Intellectual property right having unitary character within the Union’. Those rights are:
a ‘European Union trade mark’ registered in accordance with Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark;
a ‘registered Community design’ registered in accordance with Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs;
an ‘unregistered Community design’ made available to the public in the manner provided for in Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.
a ‘Community plant variety right’ granted pursuant to Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights.
This list doesn’t mention the rights regarding ‘geographical indications’.

What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?
Protected Geographical Indications (PGIs), Protected Designations of Origin (PDO) and Traditional specialty Guaranteed (TSG), are unitary rights and, like EUTMs, will not extend to the UK post-Brexit. The short-term focus should be on preserving existing rights and putting in place transitional provisions to recognize existing GIs in the UK or to allow their conversion into national rights. Going forward, support is given to the mutual recognition of EU and (future) UK rights. The EU should preserve all GIs currently applicable to the UK as third country GIs. Applications pending at the time of the UK’s exit should be recognized in the UK.
Is there a specific issue linked to a unitary IP right that is unregistered?
Under EU law, the Unregistered Community Designs (UCD) only applies within the territory of the EU. On the day of Brexit, the 3-year UCD right will cease to apply in the UK. Thereafter, on one interpretation of law, designs disclosed for the first time in the UK can never be eligible for the EU-wide unregistered design protection, and the clock will start to run on the 12-month grace period prior to filing. Given that the United Kingdom already has its own unregistered design right (UDR) regime, it is unclear whether provision will be made for parallel protection of UCDs in the United Kingdom. INTA supports the continuation of such right in the UK post Brexit, which provides different protection to that of the UK’s own UDR regime. INTA also strongly encourages the continuation of the protection of the UCDs which come into effect before the UK leaves the EU so that such UCDs are treated as protected in the United Kingdom for the remainder of their term.
Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date?
Because no one knows what will happen after the Brexit, regarding the exhaustion of protected goods. It will entirely depend on the trade negotiations between the UK and the EU. Depending on the outcome of the negotiations, the UK may adopt either national, regional or international exhaustion.
The adoption of national exhaustion of trademark rights (and in the case of the EU, “regional” exhaustion) provides protection for the investment made by brand owners in their brands, and provides the most benefits for consumers.
If the UK remains within the EEA, the UK will continue to apply the principles of EU/EEA exhaustion, with little change to the actual regime.
Should the UK adopt the principle of international exhaustion, the key questions for the UK courts to then determine would be: what amounts to “consent,” and what amounts to “legitimate reasons” to oppose further dealings. As mentioned before, existing CJEU case law on “consent’” and “legitimate reasons” (in particular in relation to repackaged pharmaceuticals and luxury goods) may still apply post-Brexit, unless and until the UK Parliament legislates otherwise or the UK Supreme Court departs from the CJEU’s case law.

Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials on this.
According to the UK law, applicants for national trademarks need to declare an intent to use their trademark. If EUTMs automatically extends to the UK, as national trademarks, such declarations will not exist and an exemption to the rule would need to be put in place or a declaration will be deemed to have been made in compliance with the UK law until a set date (e.g. the first renewal date).

Nationality
Please discuss this in relation to the following hypothetical case:
Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3 piece suit in various shops in Belgium. He believes this 3 piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium.
Can they rely on another IP right for potential infringement proceedings in Belgium?
What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit?
Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C-28/04).
They can rely on the Berne Convention, article 2, because their suits can be considered as “artistic works” and be protected through copyrights. The “twofold protection” is based, firstly, on the law relating to designs and, secondly, on the law of copyright. In Tods v. Heyraud (case C-28/04), the CJEU has held that “the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work, according to the article 12 EC, which lays down the general principle of non-discrimination on grounds of nationality. After the Brexit, the article 12 EC won’t have any effect on the United-Kingdom. This means that the twofold protection won’t be applicable anymore for UK citizens. Indeed, the protection won’t be granted to the author of a work the country of origin of which is another State which affords that work only protection under the law relating to designs. They won’t be able to claim the protection given by copyrights.
There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.
Legal protection of databases. Makers or right holders of databases protected pursuant to Article 7 of Directive 96/9/EC in the EU Member States before the withdrawal date should continue to enjoy protection after that date in the EU27 Member States and in the UK in relation to those databases. For this purpose, the requirements of Article 11(1) and (2) should be waived in the EU27 Member States in respect of UK nationals and UK companies and firms; conversely, the UK should not exclude EU27 nationals and EU27 companies and firms from legal protection of databases in the UK on nationality or establishment grounds. For legal certainty, the EUIPO should continue to share data relating to all entries on the EUIPO register as at the date of Brexit, and then continue to share information needed for renewals of the resulting UK rights during a transition period post Brexit.

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Delphine Brasseur
Brexit and intellectual property: new geography and novel nationality issues 1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? - European Union Trade Marks (EUTMs) - Registered Community Designs (RCDs) - Unregistered Community Designs (UCDs) 2. What are the common issues for the registered unitary…
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Brexit and intellectual property: new geography and novel nationality issues

1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?

– European Union Trade Marks (EUTMs)
– Registered Community Designs (RCDs)
– Unregistered Community Designs (UCDs)
2. What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?

On the day of Brexit, EUTM’S as well as RCDs will cease to have force in the UK.

There are two solutions provided by INTA (International Trademark Association)
– The Montenegro model : automatic extension of EUTMs to the UK as national trademarks

– The Tuvalu model : extension upon action by the EUTM owners of the EUTMs into national UK trademarks -subject to EUTM owners expressing their intention to obtain national UK trademarks.

RCDs should follow EUTMs vy becoming a UK national design registration or converting into a UK registration.

3. Is there a specific issue linked to a unitary IP right that is unregistered?

Yes. According to EU law, the UCD (Unregistered Community Design) only applies within the territory of the EU. So with Brexit, this UCD right will cease to apply in the UK. So it could be that unregistered designs disclosed for the first time in the UK won’t be able to have an EU-wide protection. Furthermore, UK has its own unregistered design right (UDR) regime but we don’t know if a provision will created to protect UCDs in the UK. INTA supports the continuation of such right in the UK post Brexit

4. Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining.

Because all IPRs exhausted in the EU before the withdrawal date should remain exhausted in both the EU27 and the UK after the Brexit day. And this won’t depend on any change of regime in the UK or EU27 after the withdrawal date.

But this does not mean there will be no exhaustion problem after the Brexit day. How Brexit affects exhaustion of rights in the UK will depend whether the UK adopts national, regional or international exhaustion. If the UK stays in the EEA (European Economic Area), there will be little change to the actual regime. If the UK adopts international exhaustion, UK courts will have to determine: « what amounts to “consent,” and what amounts to “legitimate reasons” to oppose further dealings ». The CJEU’s case law on that matter will still apply after the withdrawal date, unless UK legislates otherwise. The paper doensn’t say towards which solution the negociations are going.

5. Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27 ? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials

1. Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3 piece suit in various shops in Belgium. He believes this 3 piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium. Can they rely on another IP right for potential infringement proceedings in Belgium? What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit? Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C-28/04).

2. There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27

The situation is uncertain for the applicants for Unitary Rights submitted before, and still on-going on the day of Brexit. Indeed, they should be allowed to keep any priority date (right to priority – related to non discrimination) when they apply for a UK right after Brexit. But these applicants will have to actively re-apply for an equivalent UK protection.
For the already granted unitary IP rights (before Brexit day), the holder will be considered having an enforceable intellectual property right in relation to the UK territory, equivalent to the EU right. This would be done at no cost for the right holders and with minimum administrative burden.

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Donner Camille
Names : Kin Charlotte, Karam Léa, Lunguana Deborah, Maroy Marine, Donner Camille 1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? - Protected designations of origin - Protected terms in relation to agricultural products - EU trade mark - Registered community design - Unregistered community design…
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Names : Kin Charlotte, Karam Léa, Lunguana Deborah, Maroy Marine, Donner Camille
1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?

– Protected designations of origin
– Protected terms in relation to agricultural products
– EU trade mark
– Registered community design
– Unregistered community design
– A Community plant variety right

2. What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?

Answer based on Position paper transmitted to EU27 on Intellectual property rights (including geographical indications):

– It will provide uncertainty for EU members and UK concerning the scope of protection of certain IPR, the treatment of applications for certain rights and to the exhaustion of rights conferred by IPR.
– It will affect the conditions under which goods that are disposed on the EU market could continue to circulate between EU27 and UK.

The Agreement must ensure:
– a protection in the UK for IPR having unitary character within the EU. The withdrawal must not undermine this unitary character (INTA’s report underlines also this importance).
– a procedure that allows the application for IPR having unitary character within the EU, which are still pending. Be sure the rights won’t be lost when applying for an equivalent IPR in Uk
– applications for supplementary protection certificates or an extension of the duration in the UK on-going the withdrawal date are completed in accordance with the conditions laid down in EU law.
– continue to ensure protection for databases
– adequate cooperation

3. Is there a specific issue linked to a unitary IP right that is unregistered?

In the paper that the European Commission has released about the EU’s position on how existing intellectual property (IP) rights should be treated following the UK’s exit from the European Union, we can see that the EU’s position aims to ensure continuity in the protection provided by pre-Brexit IP rights, and to reduce uncertainty for rights holders.
To cut a long story short, the EU recommends that, on the date that Britain leaves the EU, any existing “unitary” IP right which is based on EU law (which prior to Brexit would cover all 28 EU member states including the UK) should automatically be converted into :
¥ an IP right covering the 27 remaining EU states (the “EU27”); and
¥ a similar IP right enforceable in the UK.
This would apply to unitary rights including European Community trade marks, registered designs, unregistered designs, plant varieties and geographical indications. Importantly, however, this seems to apply to granted rights only.
For rights that have been applied for, but not granted, prior to the UK’s withdrawal (pending Community trade mark applications, for example), the EU recommends that the applicants should be entitled to retain their priority date when applying for an equivalent IP right in the UK. This suggests that for pending rights, rights holders would have to actively re-apply for protection in the UK.
The EU’s position is good news for rights holders who wish to continue to exploit existing EU-based IP rights in the UK, and who would suffer were the UK portion of these rights to simply vanish after Brexit.
The EU’s paper suggests the sort of transitional provisions which have been expected since Britain’s vote to leave the EU. However, these suggestions will be subject to negotiation with the UK as part of any Brexit agreement. As the UK’s position on this issue is still unclear, we do not yet know whether the EU’s recommendations will be adopted.

4. Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining.

5. Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials on this.

Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3 piece suit in various shops in Belgium. He believes this 3 piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium.

1. Can they rely on another IP right for potential infringement proceedings in Belgium? What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit? Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C-28/04).

On the stage of the international framework, you have several (7) possibilities of protection. Here the EU unregistered design and copyrights are the only ones that are pertinent because nothing has been done in Belgium.

For unregistered community design, the first disclosure within the Community allows a protection of 3 years. Under UCD, they are only protected against copy.

In EU, you can have either a partial or a complete cumulation with copyright. The Berne Convention doesn’t define design but allows the cumulation.

In Tods v. Heyraud, case C-28/04, the tods shoes wasn’t protected under copyright as it was applied work. Italy had a separately criteria for artistic and functional aspects. Tods brought an action for infringement of registered designs of shoes bearing the Tod’s TM against the company Heyraud. The defendant raised apple of inadmissibility under 2(7) of the Berne Convention saying that Tods cannot claim copyright protection in France for a design that do not have such protection in Italy. Therefore Tods replied that this provision constitues discrimination under article 18 TFEU. The CJEU said that IPR’s are subject to the nondiscrimination principle.

Thanks to this case, we know that EU law prevails over international law. However, if UK is not a member of the EU, the article 18 TFEU will not be able to be raised. Therefore, it’s important to maintain an unitary character of goods under the market.

2. There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.

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Kin Charlotte, Karam Léa, Lunguana Deborah, Maroy Marine, Donner Camille
1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? - Protected designations of origin - Protected terms in relation to agricultural products - EU trade mark - Registered community design - Unregistered community design - A Community plant variety right 2. What are the common issues for the…
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1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?

– Protected designations of origin
– Protected terms in relation to agricultural products
– EU trade mark
– Registered community design
– Unregistered community design
– A Community plant variety right

2. What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?

Answer based on Position paper transmitted to EU27 on Intellectual property rights (including geographical indications):

– It will provide uncertainty for EU members and UK concerning the scope of protection of certain IPR, the treatment of applications for certain rights and to the exhaustion of rights conferred by IPR.
– It will affect the conditions under which goods that are disposed on the EU market could continue to circulate between EU27 and UK.

The Agreement must ensure:
– a protection in the UK for IPR having unitary character within the EU. The withdrawal must not undermine this unitary character (INTA’s report underlines also this importance).
– a procedure that allows the application for IPR having unitary character within the EU, which are still pending. Be sure the rights won’t be lost when applying for an equivalent IPR in Uk
– applications for supplementary protection certificates or an extension of the duration in the UK on-going the withdrawal date are completed in accordance with the conditions laid down in EU law.
– continue to ensure protection for databases
– adequate cooperation

3. Is there a specific issue linked to a unitary IP right that is unregistered?

In the paper that the European Commission has released about the EU’s position on how existing intellectual property (IP) rights should be treated following the UK’s exit from the European Union, we can see that the EU’s position aims to ensure continuity in the protection provided by pre-Brexit IP rights, and to reduce uncertainty for rights holders.
To cut a long story short, the EU recommends that, on the date that Britain leaves the EU, any existing “unitary” IP right which is based on EU law (which prior to Brexit would cover all 28 EU member states including the UK) should automatically be converted into :
¥ an IP right covering the 27 remaining EU states (the “EU27”); and
¥ a similar IP right enforceable in the UK.
This would apply to unitary rights including European Community trade marks, registered designs, unregistered designs, plant varieties and geographical indications. Importantly, however, this seems to apply to granted rights only.
For rights that have been applied for, but not granted, prior to the UK’s withdrawal (pending Community trade mark applications, for example), the EU recommends that the applicants should be entitled to retain their priority date when applying for an equivalent IP right in the UK. This suggests that for pending rights, rights holders would have to actively re-apply for protection in the UK.
The EU’s position is good news for rights holders who wish to continue to exploit existing EU-based IP rights in the UK, and who would suffer were the UK portion of these rights to simply vanish after Brexit.
The EU’s paper suggests the sort of transitional provisions which have been expected since Britain’s vote to leave the EU. However, these suggestions will be subject to negotiation with the UK as part of any Brexit agreement. As the UK’s position on this issue is still unclear, we do not yet know whether the EU’s recommendations will be adopted.

4. Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining.

5. Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials on this.

Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3 piece suit in various shops in Belgium. He believes this 3 piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium.

1. Can they rely on another IP right for potential infringement proceedings in Belgium? What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit? Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C-28/04).

On the stage of the international framework, you have several (7) possibilities of protection. Here the EU unregistered design and copyrights are the only ones that are pertinent because nothing has been done in Belgium.

For unregistered community design, the first disclosure within the Community allows a protection of 3 years. Under UCD, they are only protected against copy.

In EU, you can have either a partial or a complete cumulation with copyright. The Berne Convention doesn’t define design but allows the cumulation.

In Tods v. Heyraud, case C-28/04, the tods shoes wasn’t protected under copyright as it was applied work. Italy had a separately criteria for artistic and functional aspects. Tods brought an action for infringement of registered designs of shoes bearing the Tod’s TM against the company Heyraud. The defendant raised apple of inadmissibility under 2(7) of the Berne Convention saying that Tods cannot claim copyright protection in France for a design that do not have such protection in Italy. Therefore Tods replied that this provision constitues discrimination under article 18 TFEU. The CJEU said that IPR’s are subject to the nondiscrimination principle.

Thanks to this case, we know that EU law prevails over international law. However, if UK is not a member of the EU, the article 18 TFEU will not be able to be raised. Therefore, it’s important to maintain an unitary character of goods under the market.

2. There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.

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Elodie
1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? Protected Designations of Origin (PDO) Traditional Specialty Guaranteed * will not extend to the UK postBrexit. But plan to conserve rights acquired before Brexit and maintaining them and putting…
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1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?
Protected Designations of Origin (PDO)
Traditional Specialty Guaranteed
* will not extend to the UK postBrexit. But plan to conserve rights acquired before Brexit and maintaining them and putting up a transitionary system to have time for the UK to translate those rights in to its own legal system.
There will be problems to do with importation and exportation. -> will be harder.
Data protection will remain the same.
For the exhaustion rights, it will depend on the negotiations.
Following Brexit, rights holders would face the burden of filing two sets of customs applications: one in the EU and one with the UK Border Agency, each such application based on different sets of rights

2. What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?
Problem because most rights go by the EU rules on IP rights. But for registered trademarks, they want to minimize the disruption. We will have an automatic extension of EUTMs to the UK as national trademarks. Or, extension upon action by the EUTM owners of the EUTMs into national UK trademarks – subject to EUTM owners expressing their intention to obtain national UK trademarks.
The owners of trademarks won’t have to pay extra fees.
After, Brexit, trademark holders will be able to divide their trademark into two applications — national (UK) and EUTM.
What solutions are possible ?
* Not to do anything : EU trademark holders will have to deposit the TM in the UK. But it’s probably not commercially acceptable for UK TM holders who didn’t deposit their TM in the EU
* Try and reach an agreement between UK and EUROPEAN UNION where the UK would remain in the EU trademark system. But it would be difficult because the UK wants to leave the Court of Justice and this court in its precedents defines the extent of IP.
* UK law that authorizes EUTD holders to have their right recognized on UK territory. It’s the most likely solution.

3. Is there a specific issue linked to a unitary IP right that is unregistered?
The UCD applies within the territory of the European Union. Because of the Brexit, designs discloses for the first time in the UK can never be eligible for the EU-wide unregistered design protection. We have two different protection for UCD, one in the European Union and the other in the UK. The UK have no its own UCD regime.
The withdrawal of the UK will create some uncertainties for the holders of intellectual property rights.

But for the design unregistred an negociate commercial agreement should envisage a rule of reciprocity between the UK and the Union to extend the protection without formalities.

The EU want to ensure continuity and want to reduce uncertainty for right holders. The EU recommends that when the UK will leave the EU the existing unitary IP right will be reconverted into an IP right in the EU and a similar right in the UK.
For pending rights, rightholders will have to re-apply (a second time) for protection in the UK.

This is only suggestions from the EU, the UK will have to accept it, so there will be some negociations. Still today, we don’t know if the UK will agree with the EU’s recommendations.

4. Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining. In brief, exhaustion means that once a product protected by an intellectual property right has been put on the market in the Union by its proprietor or with the proprietor’s consent, the product can circulate freely and cannot be subject to any use restrain by the IP right holder, unless he has legitimate reasons to do so. Thus, this principle allows parallel imports between the Member States of the European Union market.

This principle of exhaustion applies to all the countries of the European Economic Area (EEA), the United Kingdom being a member of this organization. So, if the United Kingdom leaves the European Union but also the European Economic Area, the European principle of exhaustion would not apply anymore. As a result, all the products that have already been placed on the market in an EEA countries could not circulate freely anymore and could not be imported into the United Kingdom from another EEA country, and vice versa, without the authorization of the IP right holder.

This situation would be a huge problem. That’s the reason why the Withdrawal Agreement has been draft. Indeed, this Agreement address the issue about the principle of exhaustion and stipulates that “rights conferred by intellectual property rights which were exhausted in the European Union territory before the withdrawal date should, after that date, remain exhausted in both the EU27 territory and in the UK territory. The conditions for exhaustion concerning each intellectual property right should be those defined by Union law”. So, the principle of exhaustion would continue to apply for protected goods that had already been place on the market before the withdrawal date of the UK.

The EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date and not after the withdrawal date. As it has been explained, the principle of exhaustion only applies to the countries of the EEA. After the withdrawal date, the UK will not be part of the EU as well of the EEA anymore (unless it decides to remain as a member of the EEA). So the principle of exhaustion which is territorial in nature will not apply as a consequence.

5. Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials on this.
The most striking difference is that after the official withdrawal of the UK from the EU, the rights of trademark holders will not be extended to the Uk’s territory. This points outwards the issue of the extension which is discussed at some point in the three documents.
The problem will concern new trademarks because it is likely that they will have to be filled as national trademarks in the UK, unless some sort of conversion system is adopted by the UK and the EU.
Links:
https://trademark.eu/will-happen-eu-trademarks-brexit/ https://www.dlapiper.com/en/uk/insights/publications/2017/03/brexit-impact-on-trademarks-and- designs/
http://www.griffithhack.com/ideas/insights/the-impact-of-brexit-on-eu-trade-marks/

6. Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3 piece suit in various shops in Belgium. He believes this 3 piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium. Can they rely on another IP right for potential infringement proceedings in Belgium? What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit? Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C-28/04).

We have a lot of possibilities of protection with the IP rights. Here we will talk about UCD (unregistred design) and copyright.
For the UCD, this is the first disclosure within the community taht allows a protection of 3 years (begin with the day of the disclosure). Then, we have a period of one year where the author of the UCD can choose wheter to keep the UCD or to transform it into a RCD (protection of 5 years against everybody). For the UCD, the design is not protected against everybody but only against copying.

In Tods v. Heyraud we learned that EU law prevails over international law. In this case, Heyraud, tod’s distributor in France created the sam shoes tan tods. Tod’s France claimed to own the design right of the shoes sold in France.
Heyraud raise a plea of inadmissibility of the copyright protection made by Tod’s italy, on the grounds of article 2(7) of the berne convention. But we have the national treatment rule 5.1 berne convention.
The issue is : does the former article 12 EC mean that the protection afforded by the law of that state may not be subject to a distinction based on the country of the origin of work? In this case, the article 2(7) berne convention is not compatible with the article 12EC. So we have a priority of EU law over international law.

7. There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.

The other issue addressed by the EU 27 position paper is about the legal protection of databases, for makers or rightholders are not certain about the continuity of their protection in the post-Brexit UK. The EU commission is pushing toward a coherent continuity within the regulations related to databases protection. Every database (UK or EU) should have a comprehensive legal protection in the country, unrelated to the nationality of the database rightholder.

Elodie Vanderbist
Juliette Gillissen
Marie Prévost
Océane De Ridder
Naomi Bouchat

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Douley Basile, Frank Ioannis, Ferreira Harold, Grandjean Thomas, Molitor Charles, Nhe Dabelmaliss, Panda Joseph.
Douley Basile, Ferreira Harold, Frank Ioannis, Grandjean Thomas, Molitor Charles, Nhe Dabelmaliss, Panda Joseph IPdigIT n°3: Brexit and intellectual property: new geography and novel nationality issues Territoriality 1. On top of geographical indications, what are the other unitary rights which exist in the EU and will be affected by the Brexit? Among the numerous intellectual property rights having unitary character imposed at the EU level…
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Douley Basile, Ferreira Harold, Frank Ioannis, Grandjean Thomas, Molitor Charles, Nhe Dabelmaliss, Panda Joseph
IPdigIT n°3: Brexit and intellectual property: new geography and novel nationality issues
Territoriality
1. On top of geographical indications, what are the other unitary rights which exist in the EU and will be affected by the Brexit?
Among the numerous intellectual property rights having unitary character imposed at the EU level by mean of regulations, we can mention a European Union trademark, a registered community design, an unregistered community design, a community plant variety right as well as several protected geographical indications and protected designations of origin and other rights referring to agricultural products. Hence, it appears that there is no regulation providing a unitary character for IP rights such as copyright or patent. Furthermore, the IP rights having unitary character are to be distinguished from the rights harmonized by mean of directives.

The regime of these unitary rights is likely to be turned upside down in the UK with the withdrawal of this country from the EU. That’s why the withdrawal agreement should be drafted in way that ensures some stability by making sure that the unitary protection awarded by EU law to IP holders before the withdrawal continues even after that the UK leaves the EU.

2. What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?

The common issues for the registered unitary rights post-Brexit are that the UK will no longer be part of the EUTM system because EUTM will no longer cover the UK post-Brexit (their effect is determined by the territory). So national UK trademarks and other rights in the UK will no longer serve as valid grounds for oppositions filed against EUTM applications and existing EUTMs.
Any existing IP law having effect in the UK will continue to apply as it did at the date of Brexit.
EU geographical indications will also no longer have effect in the UK. If a UK registered design has not been applied, then the proprietor will have difficulty registering a UK equivalent right if the product has been on the market for more than 12 months.
The solutions favoured by industry for those rights are that trademark owners should not be required to pay official fees or it will be at a reasonable level regard to the actual costs.
There should be no publications for opposition purposes or re-examination on absolute or relative grounds. Trademarks that were registered pre-Brexit should be deemed to be UK national registrations and not be subject to re-examination.
Fees will be affordable and allow a sufficient time. There will be priority of the UK seniority to any resulting UK registration and registration certificates will be available immediately to their owners (custom/border measures ; anticounterfeiting prosecution ; litigation action).
These requirements and procedure won’t be too onerous on the owner.

3. Is there a specific issue linked to a unitary IP right that is unregistered?
Unitary IP rights are now recognised in EU law and every citizen can invoke it because it applies similarly in every state. Under EU law, the Unregistered Community Designs only applies within the territory of the EU thus the issue of the Brexit is that UCD won’t be applicable in UK anymore. On the day of Brexit, the 3-year UCD right will cease to apply in the UK.
To avoid that, the EU wants the UK to adapt its legislation in a way that go along with the EU laws about IP rights. But since UK had already voted its own regime of Unregistered Design Rights and is willing to leave the EU based on their terms, it seems that it will be complicated to keep a homogenous Unregistered IP rights within Europe. The objective of the EU is to protect the already existing UCD rights in UK in order to continue the protection of those rights within the Union. This issue is likely to be a great debate for the future of the Brexit.
4. Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date?

the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date because the IP rights which were exhausted before the withdrawal of the UK remain exhausted in both the EU27 territory and the UK territory. The conditions for exhaustion are the conditions of the Union Law.

The exhaustion of rights after the withdrawal in the UK will depend on the trade negotiations between the UK and the EU. UK may adopt either national, regional or international exhaustion.
– National exhaustion provides protection for the investment made by brand owners in their brands, and provides the most benefits for consumers.
– International exhaustion will be difficult because the questions for the UK courts would be what amounts to “consent,” and what amounts to “legitimate reasons” to oppose further dealings. Indeed, if the UK parliament doesn’t legislate, the CJEU case law on consent and legitimate reasons may still apply post Brexit.

5. what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements?

The most striking issue between these IP rights is the difference existing in their respective application scope. Indeed, EU trademarks cover the territory of the EU, including the UK, as long as the UK is a member of it. But after the UK withdrawal from the EU, this country won’t be covered by EU trademarks anymore.

This issue is likely to be addressed in the bilateral trade agreement negotiated in the course of Brexit. Such a trade agreement could provide an exception regarding trademarks, saying that the UK would still be a part of the EUTM system despite their withdrawal from the EU at large.

Nationality

Mark Tailor case

The Article 2(7) of the Berne Convention for the Protection of Literary and Artistic Works states that:
” Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.”
In Tods v. Heyraud, case C-28/04 the CJEU, the Court states that the Article 12 EC, which prohibits direct or indirect discrimination on the grounds of nationality, means that in Intellectual Property Law it “must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work”. Therefore while being part of the European Union the UK companies will not receive protection based on the protection that is given in the UK. In post-Brexit however the UK companies will no longer be protected by European Law anymore and will not be given the same level of protection based on the European principle of non-discrimination based on nationality. The article 2(7) of the Berne Convention will be applied again when it comes to the protection of a UK design in a foreign country such as Belgium.

Issue relating to the national treatment addressed in the EU27 position paper

The withdrawal of the United Kingdom from the European Union will create uncertainty for UK and EU27 stakeholders alike in relation to the scope of protection in the United Kingdom of certain intellectual property rights. This uncertainty will significantly affect the conditions under which goods that are placed on the market in the Union before the withdrawal date could continue to circulate between the EU27 and the UK. The following General Principles should apply in accordance with Union law, as interpreted by the Court of Justice of the European Union on the date of entry into force of the Withdrawal Agreement to find a solution:

(1) Intellectual property rights having unitary character within the Union
(2) Applications for Intellectual property rights having unitary character within the Union: applicant should be entitled to keep the benefit of any priority date in respect of such pending application when applying after the withdrawal date for an equivalent intellectual property right in the United Kingdom
(3) Applications for supplementary protection certificates or for an extension of their duration: After the withdrawal date, a person should continue to be entitled to obtain in the United Kingdom a supplementary protection certificate or an extension of the duration of a supplementary protection certificate (so-called paediatric extensions) where such person had submitted before the withdrawal date an application for a supplementary protection certificate or an extension of its duration before a United Kingdom authority in accordance with Union law and the administrative procedure for the grant of the certificate concerned or its extension is still on-going on the withdrawal date.
(4) Legal protection of databases : Makers or rightholders of databases protected pursuant to Article 7 of Directive 96/9/EC in the EU Member States before the withdrawal date should continue to enjoy protection after that date in the EU27 Member States and in the UK in relation to those databases.
(5) Exhaustion of right : Rights conferred by intellectual property rights which were exhausted in the European Union territory before the withdrawal date should, after that date, remain exhausted in both the EU27 territory and in the UK territory

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Haythem Khamri
Sarah-Angélique Onochie, Soline Meurice, Valentine Daenen, Alice Cordier and Haythem Khamri IP DIGIT n°4 Brexit and intellectual property: new geography and novel nationality issues On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? -European Union trade mark -registered Community design -unregistered…
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Sarah-Angélique Onochie, Soline Meurice, Valentine Daenen, Alice Cordier and Haythem Khamri

IP DIGIT n°4
Brexit and intellectual property: new geography and novel nationality issues

On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?
-European Union trade mark

-registered Community design

-unregistered Community design

-Community plant variety right

What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?
Due to the modification of the territory of EU, some EU regulations concerning the unitary rights are going to disappear.
The importations and the commerce will be negotiate by international rules (Global Britain) or by rules that were applied in the UK before the adhesion of UK in EU.

Is there a specific issue linked to a unitary IP right that is unregistered?
There is an issue concerning the unregistered Community design (UCD). UCD is part of EU law and applies in all territory of EU. With the Brexit, the UCD is not going to apply in UK anymore. The UK has its own Unregistered design right (UDR). The issue is that it is not clear yet if the UK will make a similar protection for UCD in UK. INTA supports that UCD must carry on in UK because the protection between UCD and UDR is different.
Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date?

In EU law, the exhaustion rule is an exception to the distribution rights. It gives an expiration date to the monopoly rights of a trademark owner, once the exhaustion occurs he is no longer in position to oppose further commercialization, which also means that as long as there are no exhaustion rights applicable, there is a possibility for the trademark owner to block any and all other commercialization of his product.

As certain ECJ decision illustrate, exhaustion rights do not apply when the good comes from a country outside the European Union (c.f. community vs. international exhaustion). It is also important to notify that exhaustion only applies against individual goods, thus it doesn’t apply to a whole category of products (c.f. ECJ, Sebago/G-B Unic).

Concerning the issue of the exhaustion of protected goods put on the market after the withdrawal date; according to the EU27 paper on Intellectual Property “rights conferred by intellectual property rights which were exhausted in the European Union territory before the withdrawal date should, after that date, remain exhausted in both the EU27 territory and the United Kingdom territory”.

Still according to the article, it seems the intention is to ensure that all rights and protections that a person had or for which a person was in the process of applying for should keep their effects after the withdrawal date. An important objective is indeed to protect the already existing intellectual property rights through, for instance, their automatic recognition in the UK territory once the withdrawal date has passed.

The distinctive signs of the UK v. the EU’s IP rights protections and implementation:
The UK’s withdrawal from the EU, and after proposing the “Great Repeal Bill” by the UK’s prime minister last year, the European law loses all primacy over the English national law (due to eliminating the “European Communities Act” from the English legal order. This measure will inevitably affect the conformity of the English Intellectual Property law and the European one. Considering that Intellectual property is highly and mainly regulated on a supranational scale (more precisely within a European context in the EU), the UK would need to transpose all existing text by national laws and statutes to reinstate the substantial elements of the existing texts. Furthermore, the existing Intellectual Property Rights that the UK disposes, can be seen enforced and imposed upon other European States until an agreement is reached (considering that the UK’s prime minister Teresa May has suggested to negotiate this point as well in the light of the divorce proceedings). However, none of this is certain and the future of Intellectual Property Law’s conformity is still undetermined.
The vote taking place within the UK after the referendum has delayed the proceedings concerning the implementation of a Unified Patent (UP) and a Unified Patent Court (UPC), which were expected to come into force in the start of the present year. However, this provision will not be seen drift away by the UK which has announced its intention to ratify the agreement later on, but the issue of the primacy of this court’s ruling has not been solved yet considering the English position regarding this key element of European law.
Triggering article 50 has other implications on the different European provisions that are already operating, such proceeding could affect the European Digital Single Market that aims at assuring a single unified market in the goal of protecting data and giving easier access to products and services within this field at a reduced cost. At the present time, the Member States attitudes concerning this field are quite different, and with the withdrawal of the UK without a complete series of agreements that would trace a road map that would clarify these points risks of widening these differences resulting a handicap to these bodies that were supposed to simplify coordination and uniformity across the European Market.
Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3-piece suit in various shops in Belgium. He believes this 3-piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium.

Can they rely on another IP right for potential infringement proceedings in Belgium?

The intellectual property rights that applies is design law. The two sources for design are the Paris convention of 1883 and the Berne convention (for copyright). The Hague Agreement also applies for international registration.

The article 2, §7 of the Berne Convention provides that: “Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.”

So the 3-pieces suit can be protected as artistic work if mark and his company have not applied for a design protection valid in Belgium. Copyright can also be used because the 3 piece suits is original.

In Belgium, there’re no design right but we’ve a Benelux right: Directive 98/71, Benelux law and the Council Regulation 6/2002. To be able to apply one of those disposition, you have to be able to prove the bad conduct of the defendant.

You’ve three different ways for the potential infringement proceedings in Belgium: the copyright, the trademark and the unfair competition. There’re 7 protections for the shape of items: copyright, Benelux design, Benelux trademark, community trademark, unfair competition, national UCD and RCD.

Article 3(a) of CDR defines the design as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation. Thanks to the community design regulation, you can block everyone who wants to use your design. You just have to prove that the defendant is using your design. To have an effective protection by IP rights, the copy of your design cannot be independent and the one who copy it couldn’t have any knowledge of the previous design hat he actually copied.

What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit?
As no Member State has withdrawn from the EU previously, the impact on IP rights cannot be precisely predicted. The eventual impact will depend on the outcome of negotiations and agreements made between the UK and the EU. We discuss the potential impact of “Brexit” on the different existing IP Rights.

In terms of patents, Brexit will not influence the status quo.

Registered trademarks and registered designs are the most harmonized forms of IP rights in the EU, which gives scope for significant changes Brexit. The UK may no longer be party to the relevant EU regulations that govern and implement the European Trade Mark

According to article 5§1 of the Berne Convention “Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention”.

The problem is that post-Brexit, Mark won’t be under the protection of the Berne Convention.

From their released, products put on the market in the UK will be free of movements in the EU without the agreement of the right holder. Another change is that design will have to be registered at a national level and a European level which means more costs.

Copyright is in general not subject to EU harmonization and no changes to copyright law are expected as an immediate consequence of exit from the EU.  However, EU competition law impacts on how copyright works (including digital content, broadcasts and films), are licensed and exploited within the EU and there could be some changes there when the UK is no longer subject to EU competition law.

Copyright is a national right, but it has been heavily influenced by international treaties and European legislation. The UK’s membership in the EU significantly shaped and influenced the Copyright, Design and Patents Act of 1988 (CDPA). It is unlikely that the UK will make significant changes to its copyright law. Even the aspects influenced by EU legislation are likely to remain, at least in the short to mid-term following Brexit.

There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.

Another concern expressed in the EU27 paper on intellectual property is that of databases (protection, transfer and cooperation). As the article states: “makers and right holders of databases protected pursuant to article 7 of directive 96/9/EC in the EU member states before the withdrawal date should continue to enjoy protection after that date in theEU27 member states and in the UK in relation to those databases”. For that purpose certain legal modifications will have to be made in the different UK and EU legal texts. It is also the duty of the withdrawal agreement to provide for adequate cooperation and transfer procedures for what concerns important data between the two countries.

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Haythem Khamri
Dear MR. Strowel, You shall find attached the final work of the course of IPL with the contribution of Sarah-Angélique Onochie, Soline Meurice, Valentine Daenen, Alice Cordier and Haythem Khamri. IP DIGIT n°4 Brexit and intellectual property: new geography and novel nationality issues On top of geographical indications (in the broad sense covering as well designations of origins), what are the other…
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Dear MR. Strowel,

You shall find attached the final work of the course of IPL with the contribution of Sarah-Angélique Onochie, Soline Meurice, Valentine Daenen, Alice Cordier and Haythem Khamri.

IP DIGIT n°4
Brexit and intellectual property: new geography and novel nationality issues

On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?
-European Union trade mark

-registered Community design

-unregistered Community design

-Community plant variety right

What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?
Due to the modification of the territory of EU, some EU regulations concerning the unitary rights are going to disappear.
The importations and the commerce will be negotiate by international rules (Global Britain) or by rules that were applied in the UK before the adhesion of UK in EU.

Is there a specific issue linked to a unitary IP right that is unregistered?
There is an issue concerning the unregistered Community design (UCD). UCD is part of EU law and applies in all territory of EU. With the Brexit, the UCD is not going to apply in UK anymore. The UK has its own Unregistered design right (UDR). The issue is that it is not clear yet if the UK will make a similar protection for UCD in UK. INTA supports that UCD must carry on in UK because the protection between UCD and UDR is different.
Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date?

In EU law, the exhaustion rule is an exception to the distribution rights. It gives an expiration date to the monopoly rights of a trademark owner, once the exhaustion occurs he is no longer in position to oppose further commercialization, which also means that as long as there are no exhaustion rights applicable, there is a possibility for the trademark owner to block any and all other commercialization of his product.

As certain ECJ decision illustrate, exhaustion rights do not apply when the good comes from a country outside the European Union (c.f. community vs. international exhaustion). It is also important to notify that exhaustion only applies against individual goods, thus it doesn’t apply to a whole category of products (c.f. ECJ, Sebago/G-B Unic).

Concerning the issue of the exhaustion of protected goods put on the market after the withdrawal date; according to the EU27 paper on Intellectual Property “rights conferred by intellectual property rights which were exhausted in the European Union territory before the withdrawal date should, after that date, remain exhausted in both the EU27 territory and the United Kingdom territory”.

Still according to the article, it seems the intention is to ensure that all rights and protections that a person had or for which a person was in the process of applying for should keep their effects after the withdrawal date. An important objective is indeed to protect the already existing intellectual property rights through, for instance, their automatic recognition in the UK territory once the withdrawal date has passed.

The distinctive signs of the UK v. the EU’s IP rights protections and implementation:
The UK’s withdrawal from the EU, and after proposing the “Great Repeal Bill” by the UK’s prime minister last year, the European law loses all primacy over the English national law (due to eliminating the “European Communities Act” from the English legal order. This measure will inevitably affect the conformity of the English Intellectual Property law and the European one. Considering that Intellectual property is highly and mainly regulated on a supranational scale (more precisely within a European context in the EU), the UK would need to transpose all existing text by national laws and statutes to reinstate the substantial elements of the existing texts. Furthermore, the existing Intellectual Property Rights that the UK disposes, can be seen enforced and imposed upon other European States until an agreement is reached (considering that the UK’s prime minister Teresa May has suggested to negotiate this point as well in the light of the divorce proceedings). However, none of this is certain and the future of Intellectual Property Law’s conformity is still undetermined.
The vote taking place within the UK after the referendum has delayed the proceedings concerning the implementation of a Unified Patent (UP) and a Unified Patent Court (UPC), which were expected to come into force in the start of the present year. However, this provision will not be seen drift away by the UK which has announced its intention to ratify the agreement later on, but the issue of the primacy of this court’s ruling has not been solved yet considering the English position regarding this key element of European law.
Triggering article 50 has other implications on the different European provisions that are already operating, such proceeding could affect the European Digital Single Market that aims at assuring a single unified market in the goal of protecting data and giving easier access to products and services within this field at a reduced cost. At the present time, the Member States attitudes concerning this field are quite different, and with the withdrawal of the UK without a complete series of agreements that would trace a road map that would clarify these points risks of widening these differences resulting a handicap to these bodies that were supposed to simplify coordination and uniformity across the European Market.
Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3-piece suit in various shops in Belgium. He believes this 3-piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium.

Can they rely on another IP right for potential infringement proceedings in Belgium?

The intellectual property rights that applies is design law. The two sources for design are the Paris convention of 1883 and the Berne convention (for copyright). The Hague Agreement also applies for international registration.

The article 2, §7 of the Berne Convention provides that: “Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.”

So the 3-pieces suit can be protected as artistic work if mark and his company have not applied for a design protection valid in Belgium. Copyright can also be used because the 3 piece suits is original.

In Belgium, there’re no design right but we’ve a Benelux right: Directive 98/71, Benelux law and the Council Regulation 6/2002. To be able to apply one of those disposition, you have to be able to prove the bad conduct of the defendant.

You’ve three different ways for the potential infringement proceedings in Belgium: the copyright, the trademark and the unfair competition. There’re 7 protections for the shape of items: copyright, Benelux design, Benelux trademark, community trademark, unfair competition, national UCD and RCD.

Article 3(a) of CDR defines the design as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation. Thanks to the community design regulation, you can block everyone who wants to use your design. You just have to prove that the defendant is using your design. To have an effective protection by IP rights, the copy of your design cannot be independent and the one who copy it couldn’t have any knowledge of the previous design hat he actually copied.

What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit?
As no Member State has withdrawn from the EU previously, the impact on IP rights cannot be precisely predicted. The eventual impact will depend on the outcome of negotiations and agreements made between the UK and the EU. We discuss the potential impact of “Brexit” on the different existing IP Rights.

In terms of patents, Brexit will not influence the status quo.

Registered trademarks and registered designs are the most harmonized forms of IP rights in the EU, which gives scope for significant changes Brexit. The UK may no longer be party to the relevant EU regulations that govern and implement the European Trade Mark

According to article 5§1 of the Berne Convention “Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention”.

The problem is that post-Brexit, Mark won’t be under the protection of the Berne Convention.

From their released, products put on the market in the UK will be free of movements in the EU without the agreement of the right holder. Another change is that design will have to be registered at a national level and a European level which means more costs.

Copyright is in general not subject to EU harmonization and no changes to copyright law are expected as an immediate consequence of exit from the EU.  However, EU competition law impacts on how copyright works (including digital content, broadcasts and films), are licensed and exploited within the EU and there could be some changes there when the UK is no longer subject to EU competition law.

Copyright is a national right, but it has been heavily influenced by international treaties and European legislation. The UK’s membership in the EU significantly shaped and influenced the Copyright, Design and Patents Act of 1988 (CDPA). It is unlikely that the UK will make significant changes to its copyright law. Even the aspects influenced by EU legislation are likely to remain, at least in the short to mid-term following Brexit.

There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.

Another concern expressed in the EU27 paper on intellectual property is that of databases (protection, transfer and cooperation). As the article states: “makers and right holders of databases protected pursuant to article 7 of directive 96/9/EC in the EU member states before the withdrawal date should continue to enjoy protection after that date in theEU27 member states and in the UK in relation to those databases”. For that purpose certain legal modifications will have to be made in the different UK and EU legal texts. It is also the duty of the withdrawal agreement to provide for adequate cooperation and transfer procedures for what concerns important data between the two countries.

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Lazar Myriam Nora
Brexit and IP : new geographical and nationality issues 1. On top of geographical indications, what are the other unitary rights which exist in the EU and will be affect by the Brexit ? According to the EU 27 position paper, we need to understand the other "unitary rights" as being the EUTM, the RCD, UCD and finally, the commentary…
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Brexit and IP : new geographical and nationality issues

1. On top of geographical indications, what are the other unitary rights which exist in the EU and will be affect by the Brexit ? According to the EU 27 position paper, we need to understand the other “unitary rights” as being the EUTM, the RCD, UCD and finally, the commentary plant right (even if there is not very much informations about the changes in the Post-Brexit period).

2. What are the common issues for RUR post-Brexit solutions ?

The first issue is dealing with the protection and recognition of those EU 27 IPR in the UK territory …. In fact, the scope of protection will only cover the EU 27 area. To see their rights implemented in the UK, the right-holders should, in the abstract theory, re-applicate according to the “new” UK legal order. This is difficult and commercial improving. Such administrative initiatives are deemed to be expensive and time-consumming. As a solution, different initiatives can be taken (some are specific to the unitary IPR targeted). The easier : an automatic extension embedded in the UK national legislation or, an “action” extension, means that you’ll have to ask and to pay (as it is an administrative procedure) but many claim for reasonable costs.

The second is the protection of the databases of the EU 27 industries and right-holders in the UK territory : INTA is for a transitional period of sharing information

The third is basically the pending requests that were submitted before the Brexit date : INTA votes for a continuation of those procedures.

3. A specific issue for the UIPR ? Yes, it is the fact that the UCD EU regime is only applicable to the EU and that the UK has its own UDR regime. As a consequence, the 3 years UCDR will top to exist. That means that an UCD disclosed for the first time in the UK (country origin) cannot, after be eligible for recognition in the EU order. The industries are worried and they advocate a continuance clause for this issue in particular …

4. Why the EU 27 paper only address the exhaustion of IPRs pronounced by the EU 27 ? Here, we mean that all the decisions taken by the EU 28 (so, before Brexit), shouldn’t be touched or modified afterwards by the UK afterwards. We cannot come back on our own words and the UK should remain still loyal to its previous decisions …

5. The most striking difference between the UK and EU 27 on terms if IP rights protecting distinctive signs ? The impact of the CJEU case-law and so the amplitude of the protection of certain rights (e.g. copyright, the length of the protection, only 25 years in UK). There will be a huge difference in terms of protection of the copyright (list of exception won’t be the same anymore, open as opposed to closed). Another question, also the exhaustion rights, here again, the UK may bases itself on the international legislation.

6. On nationality, the Mark Tailor Case : here, after the Brexit (no double protection in UK), for a non-registered as we said, no EU registration possible. Means that no in fragment action based on EU law but rather protecting of a work (art. 23 Berne Convention) and other Belgian legal basis (because no EU law on copyrights, just some harmonisations) plus the ex-art. 12 CE that prevent from making a distinction on te protecting just based by a national origin argument as the (CJUE concluded in its Tods v. Heyraud Case).

7. Another issue : the recognition of a trademark in the UK shouldn’t be refused on the ground that the equivalent EU trademark had not been put into genuine use in the territory of the UK before the withdrawal date. In fact, the owner of the EUTM should be able to exercise temporarily its equivalent rights as those foreseen in art. 9 2 c of the Regulation n° 207/2009 in the UK. EU 27 justifies that by the implementation of the principle of the unitary character of the IPR on the date of the Withdrawal Agreement.

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Davain Victor, Van Hees Charlélie, Darc Louis
Territoriality Question 1) The most important right that will be change with the Brexit is the freedom of circulation. If the free movement of people is already limited between the Continent and Great Britain, it will be more and per example we must have a passport to go there. The real difference is going to be in the circulation of goods…
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Territoriality

Question 1) The most important right that will be change with the Brexit is the freedom of circulation. If the free movement of people is already limited between the Continent and Great Britain, it will be more and per example we must have a passport to go there. The real difference is going to be in the circulation of goods and the comeback of taxes and a control in the borders (particularly between Ireland and North Ireland)

Question 2) A great majority of EU legislation is continuing to exist after the Brexit. Indeed, the Great Repeal Act must resume the EU legislation that must continue to be applicable in the Great Britain after the Brexit. For most of them, there will be no difference and more than 80% is going to become a British legislation but create by Europe. The only law that will be deleted of the British law are certainly the adhesion act and the primary of EU law over the British act but for the rest there will be no difference.

Question 3) For all the directive that will be create before the Brexit, the British government say that they are respecting their engagement until the end so the must introduces these new directives. Even if some of this new law should be modify or deleted by the Great Repeal Act.

Question 4) That’s not the only problem of the Brexit but the other can be resolve after the withdrawal. The 27 explain this problem because the if the question of IP is not resolve before the end of the procedure there will be a big gap between the EU law and the British that will may create problem until the withdrawal and the solution that they’ll found. M. Strowel in is text “Droits intellectuels en mode post-Brexit : quo vadis Britannia ? » take the example were the British product cannot arrived in the EU market if they don’t have the same rules has a EU producer (he takes also the opposite where EU products can’t be sold on the British market).

Question 5) The difference between the UK IP rights and the EU IP rights is the exhaustion. In UK that’s an international exhaustion and in EU it’s national. This point is debate between the 2 ex-partner because a holder of IP rights in EU should block in the future goods from UK easily with the rights he has in the Union. This example could work in the other sense were a UK enterprise could also block some EU goods. M. Strowel took the example of BMW who’s the owner of Mini based in UK. BMW can stop the importation of Mini on the continent if he thinks that the pries are not as high as he wants.

Nationality

Question n° 1
In Tod’s Vs. Heyraud, the Court of Justice of the European Union has taken a firm stand: article 12 EC, which makes impossible any discrimination not sufficiently legitimized based on nationality, is contrary to Article 5, § 1 of the Convention Berne, in that it makes the protection of intellectual rights subject to the place of “birth” of those rights (this protection being strongly linked to the nationality of the author and very limited if the origin of the author is other than that of the country in which he wants to assert his rights).
Such a decision demonstrates the desire to standardize within the EU, under the impetus of its own legislation, the scope of protection guaranteed by the Berne Convention.
The question here is: what about situations involving authors from countries outside the EU? Does the interpretation here given in Article 12 EC also remain? And above all, in a post-Brexit world, assuming that the United Kingdom remains a member of the Union as referred to in the Berne Convention, what will be the fate of British writers seeking to assert their rights within the EU?
It is very clever to be able to answer this question in 2017, as the outcome of the negotiations on Brexit remains uncertain. However, we think there are two possibilities:
– Article 12 EC only applies to EU members. Because it is very precise in its addressees, it has a stricter interpretation than the other international texts guaranteeing equality and non-discrimination: discrimination must be all the more legitimate if it wants to be validated by the CJEU. Thus, the Court might be tempted to apply its case-law strictly and no longer give any additional protection to British authors. Given the (relative) hostility with which foreign authors are received under the Berne Convention (Article 6), these authors would then be tempted to emigrate to the EU. We could then witness a massive flight of creators of artistic content from Great Britain to the countries of the European Union;
– Or, in view of the exceptional circumstances, the CJEU could relax its case-law and extend the protection of Article 12 EC to the British, as former members. A double protection (if we add Bern in the balance) which will of course be less strong than that guaranteed for the “real” members, or that will have to be ephemeral.
In our eyes, the first solution is unthinkable. Indeed, if such a brain drain could seem profitable to us, however, it risks deteriorating our relations with our neighbours wearing bowlers. And who knows what the future holds?
The second option remains very vague (the message being to avoid the first option), but it is this alternative that we believe remains the most logical in the medium term (or even in the long term).

Question n° 2
From the EU27 document:
“Makers or rightholders of databases protected pursuant to Article 7 of Directive 96/9/EC in the EU Member States before the withdrawal date should continue to enjoy protection after that date in the EU27 Member States and in the UK in relation to those databases. For this purpose, the requirements of Article 11(1) and (2) should be waived in the EU27 Member States in respect of UK nationals and UK companies and firms; conversely, the UK should not exclude EU27 nationals and EU27 companies and firms from legal protection of databases in the UK on nationality or establishment grounds.”
The Directive 96/9/EC concerns the legal protection of databases in any form. The problem here is the question whether the British people who have data in a EU database will still be protected after the Brexit. Response: yes, they will. To do that, we establish an exception to the articles 11(1) and (2) of the same directive (which concern the beneficiaries of this protection): the British people will be considered as EU citizens on this ground. And so will the EU citizens in UK, as they engaged to do so.

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Marie Walckiers – Filippa Di Termini
Marie Walckiers – Filippa Di Termini 1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? The Great Repeal Act will have the effect of repealing the law adopted upon the accession of the United Kingdom to the…
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Marie Walckiers – Filippa Di Termini
1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?
The Great Repeal Act will have the effect of repealing the law adopted upon the accession of the United Kingdom to the European Community (the European Communities Act of 1972). Mr. Justice Richard Arnold notes that the Great Repeal Act does the opposite of its title: it repeals nothing, but converts EU law into UK law. This law could however abolish some EU regulations perceived as unnecessary or inadequate.
2. What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?
The effects of Brexit on the unitary intellectual rights imposed by regulations and on national intellectual rights simply harmonized by directives will be very different: the former will be directly assigned to Brexit Day 1 due to the modification of the territory of the EU; the latter, namely harmonized rights, will remain in place and essentially unchanged.
3. Is there a specific issue linked to a unitary IP right that is unregistered?

For unregistered unitary IP rights, there must be a negotiation between the UK and the Union to extend the protection and to do so, there must be a certain reciprocity rule. Indeed, after the Brexit, the European “UCD” will cease in the UK and moreover the UK has already its own UCD right. In “Brexit” paper from INTA, it is said that a design declared first in the UK will not be acceptable in the “EU-wide protection”.

4. Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining.

The Brexit create an uncertainty related to the scope of some IP rights in the UK territory. Exhaustion before the withdrawal date will not be affected and will remain that way in both territories after the date. It is different in case of rights protecting goods put on the market before the date. The paper give an example concerning a trade mark of a good put on the market before the Brexit: it will be exhausted. Following the CJEU, the principle of exhaustion will be applied in accordance with the Union law. It will be only if the UK stays in the EEA or if the Withdrawal Agreement says so.

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Delphine Collinet, Zoé de Limbourg, Ysé Sireuil, Gwennolée van Steenbergh, Juliette du Roy
1) On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit ? The position paper of EU27 establishes a list of intellectual property rights having a unitary character within the European Union. Besides the geographical indications, Trademark as well…
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1) On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit ?

The position paper of EU27 establishes a list of intellectual property rights having a unitary character within the European Union. Besides the geographical indications, Trademark as well as design (whether it’s registered or not) are considered as unitary rights.
Copyright won’t be affected Brexit given that the harmonization has been made through directives and not through treaties.

(1) EU trademark right

Concerning the European Union trademarks, there are 3 main problems :
– Lapse of rights
– Revocation or possible expiry of EUTM only used in the UK
– Proceedings before the ECJ on the occurrence of Brexit

The INTA developed scenarios which would disturb the owner of the mark as little as possible :
– Automatic extension of EUTMs to the UK as national trademarks
– Extension upon action by the EUTM owners of the EUTMs into national UK trademarks
If one of those systems applies, the EUTMs will be regulated differently when UK is involved. However, EUTMs shouldn’t be disturbed as much. Indeed, acquiring a trademark shouldn’t be too onerous and the enactment of UK legislations could facilitate the relation between UK trademark and EUTMs.

The best should be to enact a law granting EUTM owners the right to a trademark in the UK despite Brexit. This would be an automatic conversion without additional tax and without any review which would be close to the existing system (which allows the transformation of EU brands into national trademark applications)

(2) Design right

For design, a distinction is to be made between those registered and those, which are not. Concerning the registered design rights, the RCDs will cease to apply and therefore, the UK will have to create designs that mirror it. The best should to establish a rule of reciprocity between the UK and the EU to extend protection without formality.
As the UCD only apply within the EU territory, it will also cease to apply. However, UK had already its own unregistered design right regime. In order to avoid a too big disturb, the best should to consider this provision as a parallel protection of UCDs in the UK.

2) What are the common issues for the registered unitary rights post-Brexit ? And the solutions favoured by industry for those rights ?

The Great Repeal Act, which we don’t exactly know the content yet, has for effect to repeal the European Communities Act, but actually, they will adapt the European law to their national legal system.
However, the GPA could repeal part of the European laws that the British parliament finds unnecessary to keep.
The effect of the Brexit on registered unitary rights is the following: they will be affected as soon as Brexit occurs because of the change of the European union territory.

The European union would like to protect holders of intellectual property rights having a unitary character within the Union, ensuring them that their right will not disappear after the withdrawal of the United Kingdom. Even if the country will not be part of the Union anymore, IPR holders could still possess their right on this territory, or a comparable right provided by the Union law.
By doing so, the United Kingdom needs a similar legislation than the Union one.
All of this should be costless for IPR holders.

How about the applications for intellectual property rights having unitary character within the Union? If the application has been set before a Union body and according the European laws, before the withdrawal date, then the procedure should not be stopped and the IPR should be granted.

3) Is there a specific issue linked to a unitary IP right that is unregistered ?

The Unregistered Community Designs (UCD) will be a problem in the UK. In fact, the UCD applies in the EU territory and as soon as UK withdraw from the EU, this protection won’t be applied there anymore. So, the unregistered designs that will appear after the Brexit will never get the benefit of the protection.

UK has already its own protection of drawings and designs named UDR. This means that there might be no option of continuing the UCD further after the Brexit. But INTA (International Trademark Association) recommends that UCD continues existing in the UK just because it offers a different protection than the United Kingdom’s UDR scheme.

Another issue in this context is that the EU protection is the one who gives the most protection. If UK don’t apply UCD anymore the “Flos” case of the CJEU won’t be applied anymore and the protection will be limited to 25 years after the creation of utilities articles.
A rule of reciprocity will be needed to make the UCD further existing possible.

4) Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date ? Is it because there will be no exhaustion problem after the withdrawal date ?

The EU27 Paper concerns the withdrawal Agreement which is an agreement between the UK government and the Commission about Brexit and its effects. The aim is to smooth the exit of the country and insure a certain continuity with instruments put in place by the EU.

Concerning IP rights more specifically, there will be a continuity of protection =
– Holders of a protection prior to the withdrawal would not be affected by it.
– Procedural related rights would not be lost (if pending application during the withdrawal) when applying for an equivalent protection in the UK
– On going application for extension
– Protection of databases will continue after the withdrawal.
– Exhaustion before the date won’t be a problem

This paper does not address the problem of exhaustion of protected goods after the withdrawal because the future of Brexit is quite uncertain and what will happen when the UK will clearly cut bridges with the EU. The UK could choose between national, regional or international exhaustion.
We imagine that after, it will be necessary to register the intellectual right specifically for this country as it is now necessary for third countries to the EU.

5) Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27 ? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements ?

The main difference between the IP rights protecting distinctive signs in the UK v. the EU27 is the geographical indications. Indeed, in the UK, there is no national system for the protection of geographical indications. The issue is thus to know whether, after the Brexit, the UK will guarantee the protection of food products labelled with the EU’s geographical indications. What’s important is to assert European food quality schemes around the world and ensure EU producers do not face unfair competition.

This issue has been debated in recent international trade agreements, the Mega-Regional Trade Agreements.

https://www.foodnavigator.com/Article/2017/09/11/Commission-urges-UK-to-recognise-geographical-indications-post-Brexit

https://www.cambridge.org/core/books/geographical-indications-at-the-crossroads-of-trade-development-and-culture/geographical-indications-and-megaregional-trade-agreements-and-negotiations/4B90B421C286890F9F792008010D4632/core-reader

6) Case

Mark Tailor is a UK designer of clothes, in particular of suits for lawyers working in London. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. His company is called 3piece4you and is also based in UK. A belgian company made the same 3 piece suit and Mark Taylor claims that his Intellectual Property right is infriged.

Nevertheless, Mark Tailor and his company have not applied for a design protection valid in Belgium. The article 19 of CRD states that :

« 1. A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

2. An unregistered Community design shall, however, confer on its holder the right to prevent the acts referred to in paragraph 1 only if the contested use results from copying the protected design. The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder. »

Therefore, according to this article, Mark Tailor does not benefit of a design protection on his product because it appears that the Belgian company wasn’t familiar with the design made available to the public by the holder.

Can they rely on another IP right for potential infringement proceedings in Belgium?

Because Mark and his company have not applied for a design protection valid in Belgium, the only possibility is to rely on copyright protection because it does not require any formalities.

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Coraline de Wilde, Lucile de Timary, Dounya Galichon, Clémentine Bouffioux, Rodrigo Belle, Gaspard Loop, Megan Kuperblum, Elisabeth Boonen, Léa De Jonghe, Violaine Barthélemy
Five questions raised by the IP geography post-Brexit 1) On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? For the unitary rights, the territory corresponds to the EU; national IP rights only apply to the relevant national…
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Five questions raised by the IP geography post-Brexit

1) On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?
For the unitary rights, the territory corresponds to the EU; national IP rights only apply to the relevant national territory; and Benelux IP titles cover Belgium on top of the Netherlands and Luxembourg.
– Regarding copyright: the right is automatically granted protection in the 28 member-states (and the countries part of the Berne Convention), with no formalities but actually, it is composed of a combination/bundle of national copyrights (no title subject to the same EU rules);
– Trademark: are territorial but some regional systems exist. It might apply directly on the territory of Benelux or the whole EU through the EUIPO (EU body, following art. 1 Reg 207/2009);
– Patent: are EU wide but we don’t have a uniform right for all those member states. It is really similar compares to copyright. However, you don’t have automatically a protection like copyright. For patent, you have to do an application at the EPO. But you can choose for how many states do you want to be protected in. common single application that have to be introduce before the European Patent Office based in Munich (EPO). This office will grant a European Patent that is only a bundle of national patent. Indeed, you have to indicate for which country you want a protection.

The Paris Convention (1883) that covers patent and design benefits from the rule of National treatment: art. 2(1) “Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may heafter grant, to nationals”
The “Union” means all the countries, which have ratified the convention. Including the UK. What is the effect of that provision? You are treated as nationals. It is the principle of non-discrimination (not the same as the territoriality principle). It only applies to those IP covers by the convention.

However, after ‘Brexit’ becomes effective, the UK will no longer be part of the EUTM system. Consequently, national UK trademarks and other rights in the UK no longer serve as valid grounds for oppositions filed against EUTM applications, and conversely, existing EUTMs will not serve as grounds to oppose UK trademark applications. For instance, Registered Community Designs (RCDs) will cease to have force in the UK.
The United Kingdom should basically puts in place, as of the withdrawal date, domestic legislation providing for their continued protection. The implementation of such principle should include, in particular, the automatic recognition of an intellectual property right in the United Kingdom on the basis of the existing intellectual property right having unitary character within the Union.

2) What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?
The post-Brexit regime is uncertain but we can foresee some common issues intellectual property rights will have to face. One of the main issue concerns the question of conversion of rights and the question of territorial extension. Indeed, with the withdrawal of UK from the EU, some problems will appear regarding the scope of protection and the enforcement measures of unitary rights for which the territory concerned corresponds to the EU itself.
According to a lot of people including the INTA, the solution would be an automatic conversion which would enables the holders of intellectual property rights registered in the EU to be also protected in the UK.
But all IPRs are not concerned. Indeed, there will be no problem concerning copyrights because there is no such a thing as a unitary copyright title available for the whole territory of the EU. Therefore, they will not be affected by this change of territory. But trademarks and design will be.
Concerning design, there are two ways to protect it: by registering it or by non-registering it. In both cases, it will be important to extend the scope of protection based on the territory of the EU to the UK one. For the second category, they will probably be a reciprocity rule established between both in order to extend the protection without the requirement of any formalities.
Concerning trademarks, the best solution to resolve the nullity of unitary trademark titles due to Brexit seems to be an automatic conversion as for design. With this conversion, they should be no fees required and no formalities to carry out. They should also have no re-examen of the situation which has to be already registered in the UK database.
The INTA also proposed to the EU and the UK to guarantee some important principles in order to protect right-holders. As examples, they ask them to safeguard a maximum retention of rights and the settlement of a transitional period in order to adapt to the new rules. They asked them as well to be the more transparent as possible. According to them, it is important that the brand owners and the right holders stay informed of the changes the regime incurs. It would permit them to be more aware and to know exactly what to do in order to serve their interests the best.

3) Is there a specific issue linked to a unitary IP right that is unregistered?
The EU’s position aims to ensure continuity in the protection provided by pre-Bexit IP rights, and to reduce uncertainty for the rights holders.
In order to do so, the EU recommends that on the day UK leaves the EU, any existing unitary IP right which is based on EU law should automatically be converted into an IP right covering the 27 remaining EU states, and a similar IP right enforceable in the UK. But this will apply to granted rights only.
For the rights holders that have pending rights, they would have to re-apply for protection in the UK. But this is just the position of the EU. Indeed, the UK’s position is still unclear.
For the unregistered design right, the UK intellectual Property Office has stated that the protection for unregistered designs will continue to exist through the UK unregistered design right (that already existed). However, this gives a smaller protection that the community unregistered design right (that applies and protects all the EU member states).
The question that appears is the following: How will the UK government fill the gap between the CUDR and the UK unregistered design right, knowing that it will have big impacts on numerous events?
The International Trademark Association has its own position on the subject. It strongly encourages the continuation of the protection of the unregistered community design, which comes into effect before the UK leaves the EU. It would mean that such UCDs would be treated as protected in the UK for the remainder of their term.

4) Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining.
The commission has proposed that IPRs exhausted before the Brexit (when the Union law was the rule) should remain exhausted even if there will be some changes that will be made in the regime post Brexit: the difficult point of the EU paper on IP will be to determine which rule pf exhaustion will apply: this is a political issue.
The paper hasn’t organized how negotiations will be addressed by the Commission. The European Commission has already released a paper about the approach of the negotiations that the UK regarding Intellectual Property Rights (“IPR“)
Normally, effect would be different according to the origin of the product.

5) Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials on this.
The withdrawal of the United Kingdom from the European Union will create uncertainty for UK and the member states of the European Union, regarding the scope of protection of the intellectual property rights;
A trademark gives information, a signal which is liked to certain qualities, certain advantages of the product. It can be a lower price, a green production, … You might have a lot of information associated with the trademark, if consolidates implicit informations. They have the capacity to inform the consumer. It’s important to remember that a trademark is not the protection of the product, it’s the protection of the sign of the product. But in certains cases, a trademark can restrict competition much further. Sometimes, the trademark becomes a symbol of prestige.
You can have many trade mark. You can have verbal trade mark, visual ones, even 3D one (// Case ECJ, Philips v. Remington, C-299/99 or Benelux Supreme Court, Claeryn v. Klarein, (Colgate v. Bols) 1975). A trademark show that the product has some kind of a distinctiveness, and has a validity of 10 years.
In Europe, these must be registered to the Trademark office, and this office can refuse your trademark if it’s contrary to public policy or to principles of morality, or if it has a nature as to deceive the public. While in the USA, there is a common law of trademark and the simple use of the product is enough. A EU trademark still has many advantages, it also has a unitary character (it has an equal effect throughout EU) and the procedure is simplified, with reduced costs.
The matter of EU trademark is going to be longly discussed after the Brexit, reading the English Trademarks. Indeed, European trademarks are supposed to be applicable throughout Europe but when the UK won’t be part of it anymore, some procedure will be necessary.

6) Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3 piece suit in various shops in Belgium. He believes this 3 piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium. Can they rely on another IP right for potential infringement proceedings in Belgium? What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit? Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C-28/04).
Mark Taylor and his 3-pieced professional suit company are based in the UK. Their suit is supposedly original and unknown to other professionals. A company in Belgium makes the same suits and Taylor believes that one of his intellectual property rights is violated. Indeed, he believes that the right on his design has been violated. However, nothing in the question states that Taylor has registered his design on the Community level. As such, according to article 19 of the Community design Regulation, he does not benefit from protection against the independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder. Can Taylor and his company base their action upon the violation of another intellectual property right? Since no other registration formalities seem to have been issued by the latter, the only option is to rely on copyright protection, which doesn’t require formalities.

7) There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.
The withdrawal of the UK will create uncertainty for UK and EU27 stakeholders in relation to the scope of protection in the UK of certain intellectual property rights but also to the treatment of applications for certain rights and to the exhaustion of rights conferred by intellectual property rights. It will affect the conditions under which goods that are placed on the market in the Union before the withdrawal date could continue to circulate between the EU27 and the UK.
The IPRs are the one having unitary character with the union. But the Withdrawal agreement made some statements to ensure that:

(a) the protection enjoyed in the UK 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 UK from the EU;

(b) procedure-related rights in relation to an application for an intellectual property right having unitary character within the Union still pending on the withdrawal date are not lost when applying for an equivalent intellectual property right in the UK;

(c) applications for supplementary protection certificates or for the extension of their duration in the UK on-going before the withdrawal date are completed in accordance with the conditions set out in Union law;

(d) databases protected in the EU27 and the UK before the withdrawal date continue to enjoy protection after that date;

(e) exhaustion before the withdrawal date within the Union of the rights conferred by intellectual property rights is not affected by the withdrawal of the UK from the EU.

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Reda Azaoum, Pauline de Meire, Amandine Vandromme, Victoria Rochet, Elisa Pereira de Macedo, Niels Donaberger
I. 1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? At the page 3, under the section “défintions”, there is a list of all the unitary right. This section defines the scope of the notion of…
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I.
1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?
At the page 3, under the section “défintions”, there is a list of all the unitary right. This section defines the scope of the notion of ‘Intellectual property right having unitary character within the Union’ and make an exhaustive list (except geographical indications) as we can see :
– European Union trade mark ;
– Registered Community design ;
– Unregistered Community design ;
– Community plant variety right.
About those unitary rights, the position paper is clear. Indeed: “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.”
Furthermore, specifically about the application of these rights, the text also add : “Where an application for an intellectual property right having unitary character within the Union has been submitted before an Union body in accordance with Union law before the withdrawal date and the administrative procedure for the grant of the right concerned is still on-going on that date, the applicant should be entitled to keep the benefit of any priority date in respect of such pending application when applying after the withdrawal date for an equivalent intellectual property right in the United Kingdom”.

2.What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?
The common issues are de following issues identified in the “2017 position paper of the EU27 on IP rights”: there is some issues about the intellectual property rights having unitary character within the Union.

The industries give some solutions to this because while the length and outcome of the negotiations remain, at this stage, unknown, the consequences will be far-reaching and may impact companies in many ways, including those related to intellectual property (IP) and corporate brand protection. The Brexit also have an impact on businesses economy and employment in the UK and in the EU. Therefore, INTA welcomes the opportunity to provide comments to both the EU Commission and the UK authorities to obtain the best possible outcome for both sides. In particular, INTA is advocating that both the EU and the UK support, promote and safeguard the following core principles for brand owners and right-holders during the negotiations as well as when ‘Brexit’ becomes effective: minimum disruption of trade, minimum costs, maximum retention of rights, maximum transparency and legal clarity, a transitional period in order adapt to the new rules.

The International Trademark Association (INTA) today issued a position paper calling for “minimal disruption” and strong intellectual property rights protection as the negotiations proceed on the departure of the United Kingdom from the European Union, known as Brexit. The paper lists core principles and specific recommendations related to IP for both the UK and the EU. INTA said that : “P-intensive industries contribute significantly to employment and GDP in the EU and UK. While we recognize that the Brexit process is complex, it is vital to strive for the least amount of disruption to trademark owners, and to carefully consider IP protection given its impact on businesses, consumers, employees, and the economies in these countries”.

3. Is there a specific issue linked to a unitary IP right that is unregistered?
Without an agreement to the contrary, community rights, such as registered and unregistered community designs and EU trade marks (previously community trademarks), will no longer have effect in the UK. Ultimately the scope of any rights applied for will not include the UK, and there remain questions about what will happen to the “UK portion” of such rights obtained before Brexit.
For example, protection via Community unregistered design arises automatically on first marketing in the EU. This may mean that product launches are located in the EU (and not in the UK) post-Brexit, which may have implications for industries that rely on this short-term right such as fashion. There will be protection offered by the UK’s own unregistered design right, which pre-dates the introduction of the Community unregistered design right, but has slightly different levels of protection: UK unregistered design protects the shape or configuration of a design does not protect surface decoration whereas the Community unregistered design protects aspects of the whole of part of a 3D or 2D design. UK unregistered design also arise automatically but lasts longer than the Community version (15 years vs 3 years). The simplest solution would be for the UK to create an equivalent right in the UK.

4. Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining.
There is an uncertainty created by the withdrawal of the U.K when it comes to the protection of certain intellectual property rights. This uncertainty affect the condition under which certains goods placed on the EU market should circulate in U.K before the withdrawal. So the EU27 paper on IP address the exhaustion of protected goods put on the market before the withdrawal date in order to minimize the problems that will occurs with the rights of the products after the withdrawal of the U.K.

5.Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials on this
The effects of Brexit on the right unitarian intellectuals been imperative by regulations and on the right national intellectuals simply harmonized by directives will be very different: the first ones will be directly affected in the day 1 of Brexit considering the modification of the territory of the EU; the second will stay ready and for the main part unchanged.
After the exit of the United Kingdom of the union, holders’ rights of marks of HAD are not anymore going to cover the territory of the United Kingdom: it is the question of the caducity. To remedy this problem, the adoption of an English law granting to the holders of marks of the EU the right to the mark on the territory of the United Kingdom, seems to be best solutions.
Considering the big latitude left by the international capacities regarding design and model, the United Kingdom will find a room for manoeuvre to amend its diet of protection of designs and models. In particular, the jurisprudence Flos of the CJUE will not be applicable anymore, what will allow the United Kingdom to reintroduce the arrangement which, leaning on the minimum planned by the convention of Bern, limited the duration of the copyright on utilitarian articles in 25 years after the realization of these.
The United Kingdom will also find a certain margin of labourer to fit out the copyright because the article 5 of the directive 2001/29 on the copyright in the information society will be no more application in the United Kingdom.
To conclude, it seems that the tracks of resolution of the effects of Brexit in intellectual property are multiple. It will be necessary to redo the point on the consequences of Brexit for the right intellectuals in a little less than two years.

II.

1.Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3 piece suit in various shops in Belgium. He believes this 3 piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium. Can they rely on another IP right for potential infringement proceedings in Belgium? What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit? Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C-28/04).
Regarding intellectual property rights, it should be based on the protection conferred by the Berne Convention including Article 2. Law that arose not from a formal procedure but from the mere artistic creation of the author. The creation will obviously have to answer to the criterion necessary to this one, namely, the creative activity, the formatting and the originality. From the documents we have, it turns out that this seems to be the case given the statement of the problem.

The question to be discussed after Brexit is exactly the same as the question referred in Tods v. Heyraud, Case C-28/04, concerning the country of origin and discrimination as to the nationality of the author.

After Brexit, England will be considered as a foreign country to the union, we will then ask the question whether: “the author who must claim in a Member State the protection of copyright granted by the that State’s legislation is subject to a criterion of distinction based on the country of origin of the work, as was the case in Tods c. Heyraud, Case C-28/04 since it is in this case England.

2. There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.

The principle of the national treatment is based on the idea that the foreign product has to be treated as the same of the local product. After the foreign product has entered into the market, all the product which are imported should be treaty equally as the locally product.
Basically, this principle is easy to understand, but here, the issue concern the Intellectual property rights having unitary character within the Union.
Indeed, for instance, only the applicants who submitted an application for an intellectual property right having unitary character within the Union “before the withdrawal date (…) should be entitled to keep the benefit of any priority date in respect of such pending application when applying after the withdrawal date for an equivalent intellectual property right in the United Kingdom.
Therefore, there is an after and before the withdrawal and for all the holders who owned an Intellectual property rights having unitary character within the Union before the withdrawal, these owners are protected, only these. Acting like this, the position paper works by fiction and act “as if “these holders are already EU citizen.
However, there is a specific case where the United Kingdom should also legislate to protect certain rights (geographical indications, protected designations of origin and other protected terms in relation to agricultural products) and to grant the same level of protection to those who was protected under the Union law before the withdrawal date.

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Delobelle Malory, Detrixhe Juliette, Denoiseux Nicolas, Manjah Sami, Lushiku Kenny, Gaël Gere, Laura Lins, Abdel Majid, Guillaume Torrenti, Jamel Tsabet
IPDG 4. Brexit and intellectual property: new geography and novel nationality issues Territoriality Question 1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? Before answering the question as such, it is important to fix the frame in whom…
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IPDG 4. Brexit and intellectual property: new geography and novel nationality issues

Territoriality
Question 1.
On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?

Before answering the question as such, it is important to fix the frame in whom it arises. Indeed, following Brexit, decided by referendum in June 2016 by the British, several problems settled in right because numerous changes have arrived due to this exit of Great Britain of Europe 28 (now 27…). One of them concerns intellectual property rights. It is important to know that these intellectual property rights are submitted to a territorial principle: the protection of a right is geographically limited, what means that a right is protected only in a certain territory. In this case, for the unitary rights, the territory corresponds to that of the European Union.

However, except the geographical indications, Brexit also touches other rights. For example, the holder of a personal property right within the European Union before the withdrawal of Great Britain from Europe, will see granting the same right after the withdrawal within the British territory. The same principle will apply to the holder of a right concerning products coming from the agriculture, even if Great Britain will sometimes have to take care to let in a legislation in force to insure the protection of the holder of the right. Furthermore, the principle evoked above will provoke the automatic recognition of an intellectual property right in Great Britain on the basis that the person held already such right within Europe. It will also have for consequence, among others, a renewal of dates, a respect for primauty, etc. Finally, the application of a right formerly held in Europe which will have from now its effects recognized by Great Britain, cannot produce important cost for the holder of the intellectual property right (with unitary character) in question.

Question 2.
What are the common issues for the registered unitary rights post-Brexit? And the solutions favored by industry for those rights?

On March 29th, 2019, United Kingdom should officially be leaving the European Union. Their leave is obviously not without consequences and big changes.
Regarding intellectual property rights, everything needs to be discussed again.
UK was part of the EU until June 2016. Since then, the European Union and the United Kingdom have been negotiating the departure of this last. The current situation is that the 28 countries of the EU share intellectual property rights with a unitary character within the EU. But, with the Brexit, what will happen? Especially with the unitary rights of IP law?
Many issues were brought up concerning that: what will happen to the scope of protection in the UK? What will happen to certain IP rights and to the treatment of applications and to the exhaustion of those certain rights? All those big question marks are affecting the conditions of the goods placed on the market in the Union the Brexit.

But those issues are worrying people more than they should be.
Indeed, British intellectual property rights part of the EU registered unitary rights should not be affected by the Withdrawal Agreement.
All their rights should remain protected: UK will still enjoy a protection based on Union law. The procedure-related rights to be applied for an IP right having unitary character within the EU will remain applying an equivalent IP right in the UK. UK will still be able to enforce the protection of the registered unitary rights and extend their duration before leaving. The protected database of unitary IP rights will that the same. And finally, the exhaustion of the rights conferred by IP rights will not be affected so not disadvantageous for the UK.

Intellectual property rights wise, UK should be fine. Their decision of walking away from the European Union should not impact them of that matter.

Question 3.
Is there a specific issue linked to a unitary IP right that is unregistered?

Yes, there is a specific issue linked to a unitary IP right that is unregistered. Indeed, the Unregistered Community Designs will be an issue.
We have seen in class that an UCD has a 3-year term and a 12-month grace period. With Brexit, it will not be the case anymore. Indeed, the 3 year UCD right will cease to apply in UK. Moreover, designs disclosed for the first time in the UK can never be eligible for the EU-wide unregistered design protection and the clock will start to run on the 12-month grace period.
That’s a huge issue. But that’s not all. Indeed, the United Kingdom already has its own unregistered design right regime and we don’t really know if there will be a parallel protection of UCD’s in the UK.
INTA believes that we need to continue to have such protection post Brexit because the level of protection of UDR is different in the EU and in the UK, itself.
We will need to negotiate to keep a uniform protection concerning UCD’s. If not, the UK will recover a huge margin of appreciation in order to amend its own design right regime.
The case law Flos will not be applicable anymore therefore even copyright could be amended and restricted at the minimum allowed by the Berne Convention (and this will not be well welcomed from English designers)
To summarize, we need to make an agreement in order to keep the protection of UCD’s at a maximum!

Question 4.
Why does the U27 Paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdraw date? Thanks for explaining.

With the withdrawal of the United Kingdom from the European Union the scope of the protection of the intellectual property rights is uncertain in United Kingdom.
The U27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date because the problem is about the territory of the exhaustion of rights, and the laws which were applied before the withdrawal was the European laws. So, it remains exhausted in both the EU27 territory and in the UK territory
“Rights conferred by intellectual property rights which were exhausted in the European Union territory before the withdrawal date should, after that date, remain exhausted in both the EU27 territory and in the UK territory”.
After the withdraw the question will not be the same anymore. The Union Kingdom will not be a member of the European Union, so the European laws will not be applied and the rights conferred by intellectual property rights which will be exhausted after the withdrawal, will be exhausted in the EU27 territory and not in the UK territory. The territory will change.

Question 5.
what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements?

After the Brexit, many issues on IP right will arise due to differences in protection provided by the UK and EU IP law. A few suggestions are made in order to maintain legal security enjoyed by holders of intellectual property rights in the UK. Under EU law for the moment and until March 2019, these owners have the same rights in the UK as in any other EU country. Since EU trademark is providing protection on the territory of every member state, one’s trademark will also be protected under EU law in the UK. Now UK’s trademark protection only provides protection on the territory of the country. Meaning that it is a more restricted protection. Depending on whether the trade is made only within UK or all over Europe, it will be more interesting to file for one or the other.
The question of a bi-lateral trade agreement between UK and EU takes into account the issue of IP rights. Different configurations may be adequate to fulfill this issue. A more global trade agreement (e.g. CETA) will provide free movement of goods without both parties having to coordinate their legislation on a specific matter. A deeper integration might eventually be unusual because it will bring about a pre-Brexit situation in terms of economic integration. Now the best solution would be a «sur mesure» agreement where UK would remain part of the economic bloc and keep its competence in other fields. From this point of view, propositions made by the commission seem to be applicable:
« The holder of any intellectual property right having unitary character within the Union and granted before the withdrawal date should, after that date, be recognized as the holder of an enforceable intellectual property right in relation to the United Kingdom territory, comparable to the right provided by Union law »

Nationality.
Question 6.
Mark, if he didn’t apply for a design protection can claim for the protection of other Intellectual Property Rights of patent (i), trademark (ii) or copyright (iii).
All those 3 IP Rights will be detailed in the order of facility to claim.

i- Protection of trademark
Assuming that Mark has registered his brand at the trade mark office (OHIM), he can ask for
the trademark protection if he can establish that the 3 pieces suit produced in Belgium create
confusion with his brand.
This suit must have signs capable of being represented graphically. It means that the brand
must have a sign which represents them and which is on all their clothes. It can for example
be the Swoosh of Nike or the 3 bars of Adidas. The 3 pieces suit produced by 3piece4you must also have distinctive characteristics. This requirement can be meet by demonstrating a specific shape of the suit, or a specific type of color used or whatever. If those 2 requirements are fully met, Mark can ask to court for the protection of trademark.

ii- Protection of patent
Patent is defined as a technical invention to a problem. Therefore, it may sound strange to
Invoke the protection of patent for suits. But, Mark is producing suits for London lawyer and this is not generic suits; lawyers must use specific suit to be admitted to court. Mark can for example claims that he created those 3 piece suit to respond to a problem that faces lawyer (which can be the fact that lawyer didn’t have any pocket on their old suit, or that the fabric used for other suits were not practical to absorb perspiration, etc.).
If the judge considers that the suit is new, inventive and can be susceptible of industrial application, Mark will benefit from the protection of patent. Again here, Mark must beforehand have registered his « invention » in the EPO (or the competent authority of the state).

iii- Protection of copyright
Mark can finally claim for copyright protection if his suit is considered as an artistic work.
It’s certainly the easier way to protect his suit. This protection doesn’t require any formality.
The only condition is to have an original work (and to enter the scope of an artistic work).

iv- Post-Brexit
If this case happens post Brexit, it will impact the patent and the trademark protection but not
the copyright one (which is protected by the Berne Convention).
The fact that the UK will leave the EU will have as consequences that the rule of nondiscrimination (explained in the case Tod’s v. Heyraud SA) will not apply anymore. So, it will be possible for a Belgian judge to « discriminate » and to not give the protection of trademark and patent to Mark because he will not be an EU citizen anymore. This will be the case if there is no other agreement between EU and UK (but we point the fact that these two parties are currently working to avoid this legal insecurity).

Question 7.
The national treatment, as provided in international conventions (for example the Paris Convention), is the fact that the nationals of a country part of the convention shall enjoy in all the other countries of the Convention the same advantages that their respective laws grant, or may grant to nationals. In the EU27 position paper, the European Commission has prepared the conduct of negotiations that will take part in the negotiations with the UK under the Article 50 TEU and particularly the §2 of this Article.

“2). A Member State which decides to withdraw shall notify the European Council of its intention. In the light of the guidelines provided by the European Council, the Union shall negotiate and conclude an agreement with that State, setting out the arrangements for its withdrawal, taking account of the framework for its future relationship with the Union. That agreement shall be negotiated in accordance with Article 218(3) of the Treaty on the Functioning of the European Union. It shall be concluded on behalf of the Union by the Council, acting by a qualified majority, after obtaining the consent of the European Parliament”

With the Brexit, the problem is that UK citizens and UK IP owners might lose the advantages they got with their nationality. Being not part anymore of the EU, they could lose the advantages they had as Europeans. But the enjoyment and the exercise of IP rights is subjected to the principle of national treatment that should be granted to those people, even they have withdrawn the EU. In fact, the EU27 position paper clearly says that 1) first, he holder of IP rights having unitary character within the Union should be recognized as the owner of an enforceable IP right in relation to the UK territory, the same manner than the right provided by the EU law. It means that if you have an existing IP right having unitary character within the EU, the UK should automatically recognize your IP right, no matter the fact you’re UK or EU27 citizen; 2) moreover, the protection enjoyed before the withdrawal should continue. Regarding the principle of national treatment, it means that UK IP owners should continue to be under the application of that principle. The EU27 Member states should give the UK nationals the same rights than before the withdrawal and conversely, EU27 nationals should receive the same legal protection than before, the UK cannot exclude them on nationality or establishment grounds; 3) finally, the rights conferred by IP rights exhausted in the EU before the withdrawal should remain exhausted, included in the UK territory.

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Bogucka Ewa ; Czapska Patrycja
IPdigIT n°4 1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? Two unitary rights may be affected by the Brexit: • Trademark. After the UK’s exit from the Union, European trademark rights will no longer cover the UK territory: It’s…
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IPdigIT n°4

1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?

Two unitary rights may be affected by the Brexit:

• Trademark. After the UK’s exit from the Union, European trademark rights will no longer cover the UK territory: It’s the issue of obsolescence (or extension). The second problem, is the revocation or a possible lapse of the European trademark, which are only used on the territory of the UK. It’s a problem for UK licensees who have registered an EU trademark by anticipating an extension of their activities on the continent, but finally only used it on the national territory. Finally, the problem concerning trademark or other British rights which are invoked in opposition with a UE trademark application (art. 8 Regulation) or in nullity (art. 53 Regulation). There is a risk of nullity of the opposition and a non-place to rule before the Tribunal or the Court of Justice of the EU.

• Design. There is a problem of conversion of a valid right for 28 Member States into a valid right for 27 Member States AND the UK. We need an adaptation for IP rights in UK.

Furthermore, the Brexit can lead to complications in the application of the IP rights. Let’s have a look on the different provisions. Patent is a national right but this right is regulated by the EU patent convention of 1973 , the Munich, the Paris conventions etc. In regards to trademark, in the source of trademark law on the European level, we have the regulation of the 20 December 1993; we have a trademark with the same effect in 28 European countries. The copyright law is also regulated by 10 EU directives. Design law, is also protected by regulations and directives. That means that if UK leaves the European Union, UK will be considered external to the EU. That involves adaptation for IP rights in UK, because they are under EU legislation. The Brexit will have an impact on the unitary patents because following the Brexit these would not apply in UK, because for the patents to apply one must belong to the EU.

2. What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?

About trademark rights, as we already said, after the UK’s exit from the European Union, EU trademark rights will no longer cover the UK territory. According to the specialists, three solutions may be found by industry. INTA have supported two possible scenarios: Either an automatic extension of EUTMs to the UK as national trademarks (the Montenegro model) or an extension upon action by the EUTM owners of the EUTMs into national UK trademarks – subject to EUTM owners expressing their intention to obtain national UK trademarks (the Tuvalu model). It’s the conversion system which has the most chances to be adopted, despite the two other solutions – Do nothing, which will create an obligation to EU trademark owners to apply for a TM in UK or negotiate a commercial agreement. About the first position, which is to adopt an English law which grant to EUTM owners a TM right on the UK territory, owners ask for an automatic conversion, with no supplementary tax and without examination. And if we read the INTA position from October 2017, we can see that in both considered scenarios, “registered TM owners should not be required to pay official fees, or such fees should be set at a reasonable level. Furthermore, there should be no publication for opposition purposes or re-examination on absolute or relative grounds”.

About design rights, on the Brexit day, Registered Community Designs (RCDs) will cease to have force in the UK. They should follow EUTMs either by automatically becoming a UK national design registration or converting into a UK registration.

3. Is there a specific issue linked to a unitary IP right that is unregistered?

Yes, it’s linked to design, and in particular, the Unregistered Community Designs (UCD). Under EU Law, the UCD only applies within the territory of the EU. When the day of Brexit will arrive, the 3-year UCD right will cease to apply in the UK. The thing is, UK has already its own unregistered design right (the UDR regime). At this time, there is no solution about which one of the provisions should be granted in the UK. Indeed, some, like the INTA supports the continuation of the UDR regime, but others don’t. This means that the trade agreement that will be negotiated had to deal with a rule of reciprocity between UK and the EU to extend protection without formalities. It is provided by art. 11 of the Regulation. It will remain possible to enjoy the UCD (but with different conditions than before).

4. Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining.

After the Brexit, there will be two different systems: the UK’s and the EU’s. So, we can discuss rules which are going to apply now, when nothing is already provided. But, things are about to change. And everything will depend on the negotiations between the UK and the EU. Depending on what they will decide, rules may change and affect us differently than they are doing it now. New rights will be created, either under the scope of the UK system or under the EU system. It will depends.

5. Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials on this.
  
The difference is about the geographic indications. Because it’s a very important point for the UE. Indeed, UK does not have national protection to protect the appellation of origin as well as the geographical indications. And that’s a very important point for all members of UE. A lot of products are protected in UE. UE is scared, because she’s afraid of unfair competition. In the position paper, the European commission draws attention to the fact that’s a complicated situation. It is clear from the position paper, that the EU wants to conclude an agreement with the UK because UE wants to avoid any unfair competition from the UK.

https://ip-marques.ch/2017/09/11/marques_ig_postbrexit/

http://www.dreyfus.fr/actualite/les-consequences-du-brexit-sur-les-marques-et-les-brevets/

6. Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3 piece suit in various shops in Belgium. He believes this 3 piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium. Can they rely on another IP right for potential infringement proceedings in Belgium? What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit? Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C-28/04).

The Mark Tailor case is very similar to the Tods v. Heyraud case, where an Italian society – Tod’s, try to sue the Heybraud society before the French court on the basis of one argument: An infringement of a shoe model. According to Tod’s, Hebraud copied a model of their shoes. The question asked in this case was: On which conditions an Italian society can sue the French one? Here, the case is very similar. A British designer wants to sue a Belgian clothing company, knowing that he didn’t apply for a design protection in this country.

In both cases, we have to rely on art. 2.7 of the Berne Convention, which provides: “It shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works”. To examine whether the creation is protected or not, we have to first apply the law of the original country – in this case, the United Kindgom.

Heyraud said that this action was inadmissible under this provision, and that Tods can’t claim copyright protection in France for designs that do not qualify for such protection in Italy. And, according to Tod’s, this provision can’t apply because it would be a discrimination, which is based on the copyright owner’s nationality under art. 12 EC. The ECJ said that: “Article 12 EC, which lays down the general principle of non‑discrimination on grounds of nationality, must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work”. This means that Tod’s can be protected in France, if we prove that such protection exists in his original country.

In this case, we have to check what kind of protection is available in the country of origin. The article 18 TFUE establishes the non-discrimination principle but the article 2.7 of the Berne Convention is an exception to this. But if we look at the article 5.1 of the Berne Convention establishes the national treatment rule, according to this disposition a foreign has to be treated as a national that’s why he can be protected by copyright. If we apply this case to our fictional one, Mark Tailor will be able to rely on every other IP rights that exists in Belgium, but also in his country – which is the United Kingdom. He can rely on copyright, for example, because it protects an original creation, and thus, can be used in this case. It the sale of the allegedly infringing suits happens post-Brexit, there will inevitably be changes in the domestic field. Law will change, so maybe other protection will be granted.

7. There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.

The other national treatment issue is related to legal protection of databases. The September 7, 2017 position paper provides that the requirements of art. 11(1) and (2) should be “waived in the EU27 Member States in respect of UK nationals and UK companies and firms; conversely, the UK should not exclude EU27 nationals and EU27 companies and firms from legal protection of databases in the UK on nationality or establishment grounds”.

BOGUCKA EWA
CZAPSKA PATRYCJA

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Charlotte Goffaux
Territoriality: 1) On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? !Due to the Brexit, it is going to create some uncertainty for certain intellectual property right. It will affect the procedure related-rights in relation to an application…
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Territoriality:
1) On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?
!Due to the Brexit, it is going to create some uncertainty for certain intellectual property right. It will affect the procedure related-rights in relation to an application for an intellectual property right, also to the applications for supplementary protection certificates or databases protected.
2) What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?
!The unique relation between UK and EU resulting from the Brexit will challenge some important IPR’s, that’s why we’ll have to look for a minimum disruption of trade, of costs, retention of right, transparency and legal clarity too. The solution given is that all the changes encountered for the intellectual property rights should be intensively publicized so that brand owners should be adequately informed of the changes. Also giving the opportunity to react/comment on any draft legislative before their adoption. And then finally, it will recognize any property owners that had the right before the withdrawal; their rights will not be taken away.
3) Is there a specific issue linked to a unitary IP right that is unregistered?
!No, because a person should still be entitled to obtain in UK the same right as it would have been granted in EU.
4) Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining.
!Indeed, the exhaustion (before the withdrawal conferred by intellectual property rights) will not be affected because it was put on the market in the Union before the withdrawal date. But they don’t really talk about problems after the Brexit because there still need be some process of negotiation to decided whether they will apply nation, regional or international legislation. Since this decision hasn’t been made yet, there is no interest to discuss it at this early stage.
5) Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials on this.
!The most striking differences will be for the owners of some invention that aren’t still yet protected by any IPR’s, because from that point they will have to submit their work under other conditions known in the EU. That can lead to differentiated treatment among people whether they are protected under UK legislation or under EU’s legislation.

Nationality:
1) Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3 piece suit in various shops in Belgium. He believes this 3 piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium. Can they rely on another IP right for potential infringement proceedings in Belgium? What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit? Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C- 28/04).
!In regard with the case Tods v. Heyraud, the issue was whether by adopting a distinguishing criterion based on the country of origin of the work we will have to face discriminatory treatment based on the nationality. The Court ruled that, on the basis of article 12 EC as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work. By saying this, we understand that, for Mark Tailor, the work can be protected in another country even though it wasn’t mad up over there.
2) There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.
!The problem is to ensure continuity, to protect the interests of IP owners and avoid disruption in IP protection. In order to do so, they should retain their professional capacity for the duration of all contentious matters, which are ongoing at the time of Brexit.

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Caroline Serbanescu
Caroline Serbanescu IP Geography 1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit? A European Union trade mark (registered in accordance with Regulation 207/2009); A registered Community design (registered in accordance with Regulation 6/2002); an unregistered community design made…
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Caroline Serbanescu

IP Geography
1. On top of geographical indications (in the broad sense covering as well designations of origins), what are the other unitary rights which exist in the EU and will be affected by the Brexit?

A European Union trade mark (registered in accordance with Regulation 207/2009); A registered Community design (registered in accordance with Regulation 6/2002); an unregistered community design made available to the public in the conditions laid down in Regulation 6/2002; a Community plant variety right (granted on basis of Regulation 2100/94); traditional speciality guaranteed (registered in accordance with Regulation 1151/2012) and traditional terms for wine (registered in accordance with Regulation 1308/2013).

2. What are the common issues for the registered unitary rights post-Brexit? And the solutions favoured by industry for those rights?

The common issues for the registered unitary rights are: the EU IPRs granted before the withdrawal date will cease to have effect in the UK after Brexit (1); the application for the protection of an IPR with unitary character (2) and the enforcement of the decisions of the Court of Justice of the EU (3).

The solution favoured with respect to the first issue is that they become automatically a UK intellectual property right or that they could be converted into a UK registration by action of the IPR owners.

Concerning the application for the protection of an IPR with unitary character (2), there should be a division between the EU IPRs and the national (UK) IPRs. But if the application for a EU IPR started before the withdrawal date, the EU IPR should be converted into a national IPR. If the application before a EU body happened after the withdrawal date, there should be an application for both EU IPR and national IPR. In fact, the Withdrawal Agreement should ensure that the procedure-related rights in relation to an application for an intellectual property right having unitary character within the Union will not be lost when applying for an equivalent intellectual property right in the United Kingdom.

Having regard to the ECJ jurisdiction (3), there should be a transitional period during which all decisions taken after Brexit are still enforceable in the UK.

3. Is there a specific issue linked to a unitary IP right that is unregistered?

Yes, because the unregistered community design only applies within the territory of the EU and on the day of Brexit, this IPR will cease to have effect in the UK. In plus, a design first disclosed in the UK will not have the opportunity to have a EU unregistered design protection, which is a wide one. Actually, it is unsure whether the special English regime applicable for unregistered design rights will be amended in order to have a similar protection of unregistered designs in the UK.

4. Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining.
In fact, after the withdrawal date, the UK is likely to adopt an international exhaustion rule. This means that there will be an exhaustion of IPRs when the goods are put anywhere in the world, they would be circulating freely. Thus, we can consider there will be no more exhaustion problems, which is an exception to the principle of the exclusive rights of the owner, since this exhaustion will happen internationally when goods will be put on the English market (by the proprietor or with its consent). However, in the present EU legislation, exhaustion can only happen when goods are put in the market of one Member-State of the Union, not internationally, in order to preserve the principle of free movement of the goods within the EU internal market. In this case, according to the Silhouette/Hartlauer precedent, an international exhaustion rule adopted by some MS while others have a community exhaustion rule will have the effect of putting barriers to the free movement of goods and the freedom to provide services.

5. Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials on this.

The main difference lies in the fact that in the UK, there is no national system providing for a protection of Geographical Indications, which are protected distinctive signs under the EU law. Indeed, the EU provides a wide protection for GIs.
This raises an IP issue concerning the countries where GIs are not protected. Indeed, these countries usually confer the possibility to register the name of a geographical place as a trademark, which is a protection that is not as specific as GIs. Therefore, conflicts between a trademark and a GI may rise and this issue is debated in international trade agreements.

Nationality

1. Please discuss this in relation to the following hypothetical case: Mark Tailor is a UK designer of clothes, in particular of suits for … lawyers working in London. This is also where Mark is based and had his first clients. He has designed and produced a new 3 piece suit which is very original and completely unknown to the people active in the business of clothes for professionals. Mark and his company 3piece4you are expanding their business to other cities in continental Europe populated by young professionals. At some point, Mark discovers that a Belgian clothing company distributes the same 3 piece suit in various shops in Belgium. He believes this 3 piece suit infringes his IP rights. Mark and his company have not applied for a design protection valid in Belgium. Can they rely on another IP right for potential infringement proceedings in Belgium? What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit? Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C-28/04).

According to the Tods case, Mark can rely on a copyright in Belgium to protect his 3 piece suits. Indeed, art. 5 of the Berne Convention contains the national treatment rule according to which authors, in countries of the Union other that the country of origin, shall be given the same protection as the one given to their nationals. In this precedent, the exception (art. 2 of the Berne Convention) to the national treatment rule was declared incompatible art. 18 TFEU because it creates an indirect discrimination. So, as in Belgium, Mark can be protected by a copyright, he should be treated as a national and be granted this protection.

In the context of post-Brexit, the question will be whether the national treatment rule of art. 5 of the Berne Convention will also apply to British citizens seeking the same protection as the one of the nationals of EU Members states or whether nationals of other EU Member-States will be able to take advantage of this national treatment rule when they claim protection in the UK.

2. There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.

The issue concerns the legal protection of databases, that were protected in the EU Member States before the withdrawal date. In the case of databases, copyright is involved.  Will these protected databases under EU Law still be protected after Brexit in the UK, even if the protection is granted to EU authors?

The solution proposed is that the UK cannot use nationality or establishment grounds to exclude EU27 nationals and EU27 companies from benefitting of the legal protection of databases. Conversely, EU 27 Member States cannot preclude UK nationals and UK companies and firms from having databases protected. Thus, the legal protection of databases remains the same for EU nationals and companies in the UK and conversely, this protection remains the same for the UK nationals and companies in the different EU Member States. A kind of derogatory regime should thus be established for the special situation of the UK.

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Lorena Fernandez Fernandez
Territory 1. On top of geographical indications, what are the other unitary rights which exist in the EU and will be affected by the Brexit? The EU Trade Mark, the Registered Community Design (RCD), the Unregistered Community Design (UCD), community plant variety rights and the European Patent with Unitary Effect (also called “the unitary patent”). 2. Is there a specific issue linked to a…
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Territory
1. On top of geographical indications, what are the other unitary rights which exist in the EU and will be affected by the Brexit?
The EU Trade Mark, the Registered Community Design (RCD), the Unregistered Community Design (UCD), community plant variety rights and the European Patent with Unitary Effect (also called “the unitary patent”).

2. Is there a specific issue linked to a unitary IP right that is unregistered?
Under EU law, the UCD only applies within the territory of the EU. The 3-year UCD right will cease to apply in the UK after Brexit. The UK already has its own unregistered design right (UDR) regime, it is unclear whether provision will be made for parallel protection of UCDs in the United Kingdom. INTA supports the continuation of such right in the UK post Brexit, which provides different protection to that of the UK’s own UDR regime.

3. Why does the EU27 paper on IP only address the exhaustion of protected goods put on the market before the withdrawal date? Is it because there will be no exhaustion problem after the withdrawal date? Thanks for explaining.
For rights that have been applied for, but not granted, prior to the UK’s withdrawal (pending Community trade mark applications, for example), the EU recommends that the applicants should be entitled to retain their priority date when applying for an equivalent IP right in the UK. This suggests that for pending rights, rights holders would have to actively re-apply for protection in the UK. On the question of exhaustion of rights, the position paper says that rights conferred by IP rights which were exhausted in the EU territory before the withdrawal date should, after that date, remain exhausted in both the EU 27 territory and in the UK territory. It is presumed that this would not apply to IP rights “exhausted” after the date withdrawal. In other words, products put on the market under a certain trade mark within the territory of the EU 27 for the first time after the date of the UK’s withdrawal would not be exhausted in respect of the UK territory (or vice versa).

4. Based on the three documents referenced above, what is probably the most striking difference between the IP rights protecting distinctive signs in the UK v. the EU27? Does this difference point towards an IP issue that has been hotly debated in recent international trade agreements? Thanks for adding some links to relevant materials on this.
An EU trade mark must be put to genuine use throughout the territory of the EU within five years of its date of registration in order to maintain its validity, and for every continuous period of five years thereafter. It is established EU case law that use throughout the territory of the EU implies use in more than just an isolated part of the EU, e.g., use in only one country. The question arises whether an EU trade mark which has been used sufficiently throughout the EU 27 to maintain its validity on the EU register, but has not been used for a period of five or more years in the UK, will be able to remain validly registered in the UK after U.K.’s withdrawal from the EU. The Commission’s position paper urges that the recognition of a trade mark in the UK should not be refused on the ground that the equivalent EU trade mark had not been put into genuine use in the territory of the UK before the withdrawal date.

Nationality
1. Hypothetical case: Mark Tailor and his company. Can they rely on another IP right for potential infringement proceedings in Belgium? What are the particular issues that need to be discussed if the sale of the allegedly infringing suits happens post-Brexit? Thanks for answering with a reference to the CJEU case law (in particular Tods v. Heyraud, case C-28/04).
Mark and his company could rely on the copyright protection for an artistic work. In the EU, copyright protection is obtained automatically from the moment when the work is created and no registration or other formality is required. The question of nationality, origin of the author’s work may raise but the CJEU hold in case Tods v. Heyraud : “Article 12 EC, which lays down the general principle of non-discrimination on grounds of nationality, must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work”.

2. There is another issue relating to the national treatment addressed in the EU27 position paper. Please explain what this issue is, what IP right is involved, and what solution is proposed by the EU27.
It is about the protection of databases. Makers or rightholders of databases protected before the withdrawal date should continue to enjoy protection after that date in the EU27 Member States and in the UK in relation to those databases. For this purpose, the requirements of Article 11(1) and (2) should be waived in the EU27 Member States in respect of UK nationals and UK companies and firms; conversely, the UK should not exclude EU27 nationals and EU27 companies and firms from legal protection of databases in the UK on nationality or establishment grounds

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