How Brexit has changed IP Law

How Brexit has changed IP Law
Jane Lambert
26 Jan 2021
nipc

Topics for Discussion
• The Law up to 31 Dec 2020
• Art 50 TEU
• Withdrawal Agreement
• Statutory Framework
– European Union (Withdrawal) Act 2018
– European Union (Withdrawal Agreement) Act
2020
• Statutory Instruments

• Trade Marks
• Community Registered Designs
• Unregistered Community Designs
• Community Plant Varieties
• Database Rights
• Supplementary Protection Certificates
• Exhaustion of Rights

• Changes not covered by the “Withdrawal
Agreement”
• Trade and Cooperation Agreement
• European Union (Future Relationship) Act
2020
• How IP is likely to develop In future.

The Law up to 31 Dec 2020
In addition to national IP legislation on trade
marks, registered designs, patents,
copyrights and related tights:-
• Council Regulation (EU) 2017/1001 provided
for EU trade marks;
• Council Regulation (EC) No 6/2002 provided
for registered and unregistered Community
designs;

for Community plant variety rights;
• Council Regulation, (EU) No
1151/2012 provided for quality schemes for
agricultural products and foodstuffs;
for supplementary protection certificates for
plant protection products; and

• Council Regulation (EC) No 469/2009
provided for supplementary protection
certificates for medicinal products.

Art 50 (2) TEU
“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.”

Art 50 (3) TEU
"The Treaties shall cease to apply to the State in
question from the date of entry into force of the
withdrawal agreement or, failing that, two years
after the notification referred to in paragraph 2,
unless the European Council, in agreement with
the Member State concerned, unanimously
decides to extend this period."

Withdrawal Agreement
Agreement on the withdrawal of the United
Kingdom of Great Britain and Northern Ireland
from the European Union and the European
Atomic Energy Community was signed at the
end of Jan 2020.
• Art 185 provided for the agreement to come
into force on 31 Jan 2020;

• Art 126 provided for a transition or
implementation period from 31 Jan until 31
Dec 2020; and
• Art 127 (1) provided for EU law to be
applicable to and in the UK during the
transition period.
• Title IV of Part Three provided for continued
protection of IA by national IP rights.

Statutory Framework
• European Union (Withdrawal) Act 2018
• European Union (Withdrawal Agreement) Act
2020
• European Union (Future Relationship) Act
2020

European Union (Withdrawal)
Act 2018
• 25 sections and 9 schedules
• S.1 repealed European Communities Act 1972
• S.2 (1) preserves EU-derived domestic
legislation.
• S.3 (1) incorporates direct legislation into
domestic law.
• S.6 (1) (a) relieves UK courts from following
CJEU after exit day.

Act 2018
• S.6 (1) (b) abolishes references to CJEU under
art 267 TFEU
• S.6 (2) permits a court to take account of
decisions of CJU or other EU entities.
• S.6 (3) EU law to be interpreted in accordance
with retained case law.
• S.6 (4) (a) UK Supreme Court is not bound by
retained case law.

Act 2018
• S.8 (1) entitles Ministers to amend retained
law by regulation.
• S.9 (1) enables Ministers to implement the
withdrawal agreement by regulation.
• Sched. 1 makes further provisions for retained
EU law such as abolishing rule in Francovich.
• Sched. 7 provides for Parliamentary scrutiny of
S.8 regulations.

European Union (Withdrawal
Agreement) Act 2020
• 27 sections divided into 5 Parts with 5 Scheds.
• S.1 inserted a new s.1A into the 2018 Act
which suspended the repeat of the 1972 Act
during the implementation period.
• S.25 modified 2018 Act to allow for s.2 and s.3
to come into force on 31 Dec 2020.

Statutory Instruments
The following regulations were made before it
was known whether there would be a
withdrawal agreement:
• The Plant Breeders’ Rights (Amendment etc.)
(EU Exit) Regulations 2019 (SI 2019 No 204
• The Intellectual Property (Exhaustion of
Rights) (EU Exit) Regulations 2019 (SI 2019 No.
265);

• The Trade Marks (Amendment etc.) (EU Exit)
Regulations 2019 (SI 2019 No 269);
• The Intellectual Property (Copyright and
Related Rights) (Amendment) (EU Exit)
• The Designs and International Trade Marks
(Amendment etc.) (EU Exit) Regulations 2019
(SI 2019 No 638);

• The Patents (Amendment) (EU Exit)
• The Agricultural Products, Food and Drink
(Amendment) (EU Exit) Regulations 2019 (SI
2019 No 1366).
The Intellectual Property (Amendement etc.)
(EU Exit) Regulations 2020 (SI 2020 No 1050)
were made after the Withdrawal Agreement.

EU Trade Marks
• Art 54 (1) (a) of the Withdrawal Agreement
provides for the holder of EU trade mark to
become the holder of a UK trade mark
consisting of the same sign for the same goods
or services (“corresponding mark”).
• Art 55 (1) requires the IPO to carry out the
registration of the corresponding mark free of
charge.

EU Trade Marks
• Art 55 (2) provides that holders of EU trade
marks shall not be required to introduce an
application, undertake any particular
administrative procedure or have an address
for service in the UK for 3 years following the
end of the transitional period.
• Art 55 (3) requires the EU Intellectual Property
Office to assist the IPO.

EU Trade Marks
• Art 56 provides for continued protection in
the UK of international registrations
designating the EU.
• Art 59 (1) gives applicants for EU trade marks
during the transitional period that have not
yet been granted the same priority date if
they wish to apply for a corresponding mark
for the same goods.

EU Trade Marks
• Art 54 (3) provides that if an EU trade mark is
declared invalid or revoked in the EU in
proceedings that were ongoing during the
transition period, the corresponding mark will
also be declared invalid or revoked from the
same date unless the grounds of invalidity or
revocation do not apply to the UK.

EU Trade Marks
• Art 54 (4) requires the renewal date of a
corresponding mark to be the same as that of
the EU trade mark.
• Art 54 (5) (a) requires the filing date, priority
or seniority of the corresponding mark to be
the same as the EU trade mark.

EU Trade Marks
• Art 54 (5) (b) provides that a corresponding
mark shall not be revoked on the ground that
the EU mark was not put to genuine use in the
UK during the transitional period.

EU Trade Marks
Reg. 2 and Sched. 1 of The Trade Marks
(Amendment etc.) (EU Exit) Regulations
2019 (as amended by The Intellectual Property
(Amendment etc.) (EU Exit) Regulations 2020)
provide for EU trade marks to be treated as UK
registered trade marks from the end of the
transitional period.

EU Trade Marks
• Sched.1 inserts a new s.52A and Sched. 2A
into the Trade Marks Act 1994.
• Sched. 2A implements arts 54, 55 and 59 of
the Withdrawal Agreement relating to EU
trade marks.
• Reg. 3 and Sched. 2 provide for renewal and
other fees for corresponding marks.

EU Trade Marks
• Reg. 4 and Sched. 3 amend provisions of Act
removing or changing references to the EU.
• Reg. 5 and Sched. 4 amend the Trade Mark
Rules 2008.
• Reg. 6 and Sched. 5 make consequential
amendments, repeals, revocations,
transitional and saving provisions.
• Para 6. of Sched. 5 repeals EUTM Regulation

EU Trade Marks
• Reg. 9 (b) of The Intellectual Property
inserts a new para 21A into Sched. 2A of the
1994 Act to implement art 54 (3) of the
Withdrawal Agreement.
• The 2020 Regulations make further
consequential amendments to the Act and
Rules.

EU Trade Marks
Reg. 6 and Sched. 4 of The Designs and
International Trade Marks (Amendment etc.) (EU
Exit) Regulations 2019 as amended by The
Intellectual Property (Amendment etc.) (EU Exit)
Regulations 2020 provide for international
marks designating the EU to be treated as UK
marks thereby implementing art 56 of the
Withdrawal Agreement.

EU Trade Marks
• Sched 4. as amended inserts a new s.54A and
Sched. 2B into Trade Marks Act 1994 for
international marks designating the EU.
• Reg. 7 (c) and Part 2 of Sched. 5 provide for
renewal and other fees for UK marks
corresponding to international registrations.
• Reg. 9 and Sched. 7 amend the Trade Marks
Rules 2007.

Registered Community Designs
• Art 54 (1) (b) of the Withdrawal Agreement
provides for the holder of registered
Community design (“RCD”) to become the
holder of a UK registered design for the same
design (“corresponding design”).
registration of the corresponding design free
of charge.

• Art 55 (2) provides for holders of RCD not to
be required to introduce an application,
undertake any particular administrative
procedure or have an address for service in
the UK for 3 years following the end of the
• Art 55 (3) requires the EU Intellectual Property
Office to assist the IPO.

• Art 56 provides for continued protection in
the UK of international registrations
designating the EU.
• Art 59 (1) gives applicants for RCD during the
transitional period that have not yet been
granted the same priority date if they wish to
apply for a corresponding design for the same
design.

• Art 54 (3) provides that if an RCD is declared
invalid in the EU in proceedings that were
ongoing during the transition period, the
corresponding design will also be invalid from
the same date unless the grounds of invalidity
do not apply to the UK.

• Art 54 (4) requires the renewal date of a
corresponding design to be the same as that
of the RCD.
• Art 54 (6) (a) requires the term of protection
of a corresponding design to be at least equal
to that of an RCD.
• Art 54 (6) (b) requires the date of filing or
priority to be that of the RCD.

Reg. 5 and Sched. 3 of The Designs and
Exit) Regulations 2019 (as amended by The
Intellectual Property (Amendment etc.) (EU Exit)
Regulations 2020) implement Arts. 54 (1) (b),
(3), (4) and (6), 55 (1), (2) and (3), 56 and 59 (1)
of the Withdrawal Agreement.

• Para 2 of Sched. 3 of The Designs and
Exit) Regulations 2019 as amended insert a new
s.12A and s.12B and new Sched. 1A and 1B into
the Registered Designs Act 1949.
• S.12A and Sched. 1A provide for RCD and
applications for RCD to be treated as UK
registered designs or applications for UK designs.

• S.12B and Sched. 1B provide for international
designs designating the EU and applications
for such international designs to be treated as
UK registered designs.
• Reg. 7 and Sched. 5 Part 2 provide for renewal
and other fees for corresponding designs.
• Reg.8 and Sched. 6 amend the Registered
Designs Rules 2006.

• Reg. 10 and Sched. 8 amend the Registered
Designs Act 1949 and Copyright, Designs and
Patents Act 1988.
• Reg. 11 revokes The Community Designs
(Designation of Community Design Courts)
Regulations 2005.

• Reg. 24 of The Intellectual Property
amends the Designs Rules.

Unregistered Community Design
Art 57 of the Withdrawal Agreement requires
the holder of an unregistered Community design
(“UCD”) that came into being before the end of
the transition period to enjoy a similar right in
the UK for at least as long as the remainder of
the UCD term.

The Designs and International Trade Marks
(as amended) implement art 107 of the
Withdrawal Agreement by permitting UCD
coming into being before the end of the
transition period to continue as “continuing
unregistered Community designs” and creating a
new “supplementary unregistered design”.

• Reg. 4 (3) and Sched. 2 provide for “continuing
unregistered designs” and Reg. 3 and Sched. 1
provide for “supplementary unregistered
designs”.
• Reg. 4 (3) (a) and Part 1 of Sched 2 amend the
Community Design Regulation and Reg. 4 (3)
(b) and Part 2 of Sched 2 amend The
Community Design Regulations 2005.

• Reg. 3 (1) and Part 1 of Sched. 1 amend the
Community Design Regulation to create
“supplementary unregistered designs”.
• Reg. 3 (2) and Part 2 of Sched 1 amend The
Community Design Regulations 2005.

Geographical Indications
• Art 54.2 of the Withdrawal Agreement
requires the UK to continue to protect
geographical indications, designations of
origin or traditional specialities guaranteed
after the end of the transition period.
• The same provision provides that where such
a GI ceases to be protected in the EU, the UK
no longer has to protect it.

registration of the UK right free of charge
• Art 55 (2) provides that holders of a
geographical indication shall not be required
to introduce an application, undertake any
particular administrative procedure or have an
address for service in the UK for 3 years
following the end of the transitional period.

• Part 3 and the Scheds. to The Agricultural
Products, Food and Drink (Amendment) (EU
Exit) Regulations 2019 amend Council
Regulation (EU) No 1151/2012 to implement
arts 54 (2) and 55 (2) of the Withdrawal
Agreement.

Community Plant Varieties
• Art 54 (1) (c) of the Withdrawal Agreement
provides for the holder of a Community plant
variety (“CPV”) to become the holder of a
corresponding plant variety in the UK
(“CPVUK”).
registration of the CPVUK free of charge

• Art 55 (2) provides for holders of CPV not to
be required to introduce an application,
undertake any particular administrative
procedure or have an address for service in
the UK for 3 years following the end of the
• Art 55 (3) requires the Community Plant
Variety Office to assist the Plant Variety Rights
Office.

• Art 59 (1) gives applicants for RCD during the
transitional period that have not yet been
granted the same priority date if they wish to
apply for a corresponding design for the same
design.
• Art 59 (2) gives such applicants 6 months
priority in the UK for the purpose of
determining distinctiveness, novelty and
entitlement to the right.

• Art 54 (3) provides that if a CPV is declared
invalid in the EU in proceedings that were
ongoing during the transition period, the
CPVUK will also be invalid from the same date
unless the grounds of invalidity do not apply
to the UK.
• Art 54 (6) (a) requires the term of protection
of a CPVUK to be at least equal to that of an
CPV.

• Art 54 (6) (b) requires the date of filing or
priority of the CPVUK to be that of the CPV.
• The Plant Breeders’ Rights (Amendment etc.)
(EU Exit) Regulations 2019 implement Arts 54
(1) (c), (3) and (6), 55 (1), (2) and (3) and 59
(1) and (2) o the Withdrawal Agreement.

Database Rights
Art 58 (1) of the Withdrawal Agreement requires
the holder of a database right that arose before
the end of the transition period to be entitled to
maintain an equivalent enforceable IP right in
the UK for at least the period remaining under
art 10 of Directive 96/9/EC.
Art 58 (2) provides for UK nationals, residents
and firms to continue to qualify for database
right protection under art 11 of the Directive.

Database Rights
• Art 58 (1) of the Withdrawal Agreement
requires the holder of a database right that
arose before the end of the transition period
to be entitled to maintain an equivalent
enforceable IP right in the UK for at least the
period remaining under art 10 of Directive
96/9/EC.
• Covered by s.2 (1) of the 2018 Act.

Supplementary Protection
Certificates
Art 60 (1) of the Withdrawal Agreement requires
Council Regulations (EC) No 1610/96 and No
469/2009 to continue to apply in the UK to
supplementary protection certificates that were
granted or applied for before the end of the
transition period.
Art 60 (2) requires the same level of protection
for such certificates.

Certificates
The law on SPCs were contained in the following
Council Regulations:
• Regulation (EC) No 1610/96 for plant
protection products;
• Regulation (EC) No 469/2009 for medicinal
products; and
• Regulation (EU) 2019/933 amending 469/2009
(the waiver regulation).

Certificates
• All three regulations were incorporated into
domestic law by s.3 (1) of the 2018 Act and
amended by The Patents (Amendment) (EU
Exit) Regulations 2019 under s.8 of the Act;
• Part 6 amends Regulation 1610/96;
• Part 8 amends Regulation 469/2009 as
amended by the waiver regulation.

Exhaustion of Rights
• Art 61 of the Withdrawal Agreement requires
IP rights which were exhausted both in the EU
and UK before the end of the transition period
under EU law to remain exhausted both in the
EU and in the UK.
• That requirement is implemented by reg. 2 of
The Intellectual Property (Exhaustion of
Rights) (EU Exit) Regulations 2019 as amended
by reg. 6 of the 2020 Regulations.

Changes not covered by the
• Copyright: The Intellectual Property (Copyright
and Related Rights) (Amendment) (EU Exit)
Regulations 2019 amend the Copyright, Designs
and Patents Act 1988 and secondary legislation to
remove or amend all references to the EEA
and/or EU.
• These will abolish cross-border portability of
online content services, copyright clearance for
satellite broadcasts, reciprocal protection for
database rights and the orphan works exception.

Changes not covered by the
• Unregistered Design Rights: Para. 11 of Sched.
8 of The Designs and International Trade
Marks (Amendment etc.) (EU Exit) Regulations
2019 amend s.217 and s.220 of the Copyright,
Designs and Patents Act 1988 to remove EEA
states from the list of “qualifying persons” and
“qualifying countries”.

Trade and Cooperation
Agreement
• Part One: common and institutional provisions in the
Agreement;
• Part Two: trade and other economic aspects of the
relationship, such as aviation, energy, road transport, and
social security;
• Part Three: cooperation on law enforcement and criminal
justice;
• Part Four: thematic issues, notably health collaboration;
• Part Five: participation in EU Programmes,
• Part Six: dispute settlement;
• Part Seven: final provisions.

Agreement
• Chapter 1 (arts IP1 to IP6) general provisions
• Chapter 2 (arts IP7 to IP37) standards
concerning intellectual property rights
• Chapter 3 (arts IP38 to IP54) enforcement of
intellectual property rights
• Chapter 4 (arts IP55 to IP57) other provisions.

Agreement
• The objectives of the title which are set out in art
IP1 are as follows:
• "(a) facilitate the production, provision and
commercialisation of innovative and creative
products and services between the Parties by
reducing distortions and impediments to such
trade, thereby contributing to a more sustainable
and inclusive economy; and
• (b) ensure an adequate and effective level of
protection and enforcement of intellectual
property rights.".

Agreement
Chapter 2 (arts IP7 to IP37) standards concerning
• Section 1 (arts IP7 to IP17) copyright and related
rights
• Section 2 (arts IP18 to IP26) trade marks
• Section 3 (arts IP27 to IP31) designs
• Section 4 (arts IP32 to IP33) patents
• Section 5 (arts IP34 to IP IP36) undisclosed
information
• Section 6 (art IP37) plant varieties

Agreement
Chapter 3 (arts IP38 to IP54) enforcement of
• Section 1 (arts IP38 to IP39) general obligations
• Section 2 (arts IP40 to IP51) civil and
administrative enforcement
• Section 3 (art IP52) civil judicial procedures and
remedies of trade secrets
• Section 4 (arts IP53 and IP54) border
enforcement

European Union (Future
Relationship) Act 2020
• Act consists of 40 sections and 6 Schedules
• Passed all its legislative processes in a single
day
• Ratifies the Trade and Cooperation Agreement
• Part One (s.1-s.13) Security
• Part Two (s.14-s.28) Trade and other matters
• Part Three (s.29-s.36) General Implementation
• Part Four (s.37-40) Supplementary and Final

How IP Law will develop
• UK is likely to remain a party to the European
Patent Convention, World Trade Organization,
World Intellectual Property Organizations and
the Paris, Berne, Rome and other important
Conventions.
• German ratification of the UPC Agreement has
been delayed yet again by fresh proceedings
in the German Constitutional Court.

How IP Law will develop
• Courts in the UK likely to continue to follow
CJEU for the foreseeable future because:
– Legislation up to 31 Dec 2020 remains part of UK’s
domestic law
– Case law up to 31 Dec 2020 is also part of UK’s
domestic law unless changed by the Supreme
Court
– Courts are still permitted to follow CJEU.

Any Questions
Jane Lambert
4-5 Gray’s Inn Square
London
WC1R 5AH
020 7404 5252
jane.lambert@nipclaw.com
www.nipclaw.com

How Brexit has changed IP Law

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