As noted in our post earlier this week, the European Commission has released its position paper on the treatment of intellectual property (IP) rights (including geographical indicators) after the UK completes its exit from the EU. It sets out general principles on unitary IP rights, geographical indicators, exhaustion, supplementary protection certificates and the protection of databases.

CITMA recently published its position paper on post-Brexit registered trade mark and design rights, and rights of representation. Many elements of the EU paper reflect the position of CITMA, in particular the unitary character of IP protection for European Union Trade Marks (EUTMs) in the UK and EU after the withdrawal date. However, there are two aspects of particular interest to UK practitioners that were not addressed: rights of representation and reciprocity of UK geographical indicators.

IP Rights Post-Brexit

The EU paper calls for IP rights such as EUTMs (and Registered Community Designs) to automatically cover the UK after Brexit. It stated that both current trade marks and pending applications should receive equivalent IP rights after the UK leaves the EU. On exhaustion rights, it suggested that IP rights exhausted before the withdrawal date should remain exhausted after the withdrawal date in both the UK and EU.

It is positive that both the EU and UK are aligned in maintaining current protection and enforceability, with limited costs to IP owners. Cooperation between the EU Intellectual Property Office (EUIPO) and the UK Intellectual Property Office (UKIPO) will ensure a smoother transition throughout Brexit, with fewer delays and reduced administrative burdens. It is essential to have a harmonised transitional arrangement in place to ensure that existing and future protection is not compromised.

Although this provides a degree of legal certainty in relation to registered IP rights and cooperation between the UKIPO and EUIPO, some issues still remain ambiguous.

Rights of Representation

Rights of representation are unquestionably an important issue for the IP profession. However, this was not covered in the EU Commission paper.

CITMA has argued that UK Trade Mark Attorneys should continue to be able to act before the EUIPO and be granted an extension of existing rights to include representation before the European General Court (EGC) and Court of Justice of the European Union (CJEU) in order to allow them to represent their clients at all levels of the justice system.

If the UK leaves the EU but remains a member of the European Economic Area (EEA), then rights of representation before the EUIPO will be maintained. However, if the UK leaves the EU and does not join the EEA, a bilateral agreement between the UK and EU would be needed to enable rights of representation to continue.

The EU Commission is yet to clarify its views on this matter but the fact that their paper stated that pending applications should be carried over to UK applications raises questions over whether existing representatives will have transitional representation rights.

Geographical Indicators

Although geographical indications (GIs) got a specific mention in the EU Commission paper, the actual outcome remains uncertain as the paper merely outlined suggested approaches the UK could take and implied implications for GIs.

GIs are signs (usually names) which identify a good as originating in a region or locality of a particular country, where a given quality or reputation is attributable due to its geographical origin.

It has become common to incorporate protection for GIs in free trade agreements, or in agreement frameworks relating to the food or agriculture industry as GIs cover these products. The EU and UK might be best advised to conclude a mutual recognition of GIs in a free trade agreement; this would then require its own enforcement framework. The EU Commission paper highlights that the UK should put in place any necessary domestic legislation to provide comparable protection to that under EU law, but it does not outline how the EU will reciprocate this.

There are currently around 3000 food and drink products protected by GIs in the EU; however, only a minority of these are British. In theory, the protected status of British foodstuffs, such as Cornish pasties, should be preserved in EU countries post-Brexit; unless the EU commission repeals the protections. However, the status of EU foodstuffs in the UK could end once the country leaves the EU, meaning that British companies could rename previously protected products; e.g. British champagne or English parma ham.

The concern of the European Parliament is that the UK could break previous agreements. Arguably, when negotiating the GI provisions, the UK might be at an advantage because it is in a position to exclude EU products by amending UK law. Although in terms of the bigger picture, the EU could craft retaliatory actions; for example, the specific inclusion of protection for GIs may be used as leverage by the Commission in its treatment of rights in the UK after withdrawal.

Nonetheless, there is a mix of international treaty provisions for the UK to fall back on if no agreement with the EU is reached, including the 1995 WTO Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement; although this would require enforcement (in the form of stand-alone UK market access schedules) because at present, the UK operates in the WTO collectively as an EU member state. Also, there is the possibility that certain trade mark provisions may apply. However, GI producers have found using trade mark regimes to be complicated, costly and not always effective. On the whole, trade mark regimes do not provide GIs protection as comprehensively as a specific GI system.

CITMA is of the view that the UK should accede to current EU regulations where suitable options exist or that the government should create new regulations where these do not exist; e.g. a new legal framework, including a new UK register for GIs.

Practical advice for food and drink businesses is to be aware of these potential changes to GIs, monitor the position and consider engaging with Government agencies to secure the best result. It may also be worth considering a double registration: both as a GI and as a trademark. The basic geographical name could be registered as a GI with logos and colour combinations being registered as trade marks.

Conclusions

In conclusion, how it will play out remains to be seen. The European Commission paper mirrors CITMA’s position paper in many respects but the omission of details on rights of representation and reciprocity of GIs is a concern.

CITMA is pushing for extended rights of representation but it seems that the most important priority should be ensuring that current rights to represent clients at the EUIPO are maintained. To prevent disruption to business and ensure a smooth transition, it is vital that the EU outline their position.

If the UK does not agree with the approaches set out by the EU and the repeal of existing GI protection for UK products becomes a threat, there will be strong push for reciprocal recognition – especially from UK producers currently utilising the differentiation premium that GIs provide. The UK has yet to outline its own official position on both of these issues and the final outcome could be very different from what the EU envisions in its paper.

Taken as a whole, the EU Commission paper is a welcome development as it confirms how EU negotiators want to proceed. Most importantly, it finally puts intellectual property into the main Brexit discussions.

Amelia Skelding 28 September 2017