10 Years since Brexit: What has happened in IP since? Part 2

This post is the second of two addressing the way in which IP law has developed in the 10 years since the UK voted to leave the EU. This post covers copyright, trade marks, designs, patents, plant varieties and confidential information. The first post is here.

Copyright

Copyright law in the UK has remained closely aligned with that of the EU in most respects.

On the fundamental question of the meaning of originality, the UK courts have continued to apply the “author’s own intellectual creation” test, as set out in Infopaq, Painer and numerous other cases, rather than reverting to the traditional “skill, labour and judgement” standard applying previously. The clearest indication of that continuing application of the Infopaq test was in THJ Systems Ltd v Sheridan [2023] EWCA Civ 1354, where the Court of Appeal referred to the CJEU’s consistent case law on originality as “the correct legal test”.

Similarly, when the Court of Appeal had the opportunity to look at the communication to the public jurisprudence in Tunein Inc v Warner Music UK Ltd & Anor [2021] EWCA Civ 441, it chose to follow (consistent) UK and CJEU case law. The Court of Appeal referenced UK and CJEU case law without distinction, referring to 25 judgments on the communication to the public test, including important cases such as Svensson, GS Media and VG Bild. The Court of Appeal rejected the suggestion that it should depart from that body of caselaw for eight separate reasons, including that contracting states to the WIPO Copyright Treaty “should be striving for consistency of interpretation, rather than unilaterally adopting their own interpretations.”

One significant area where the respective systems appear to have diverged is on works of applied art. The seminal case of Cofemel (C-683/17), together with the decision in Brompton Bicycle (C-833/18), had indicated that the UK’s ‘closed list’ system of categories of protected works was incompatible with EU law, and therefore assimilated law. The closest category of work available to claimants in this context is that of “works of artistic craftsmanship”. Historic case law (Hensher v Restawile [1976] AC 64) has meant that fitting within that category is challenging for many works of applied art, given the apparent need to show that the work is both artistic and a work of craftsmanship.

One early decision, Response Clothing (IPKat), had indicated that the UK’s approach might try to align with Cofemel, with a fabric being found to be both a work of artistic craftsmanship and original under the Cofemel test. That decision was ripe for an appeal as a significant point of law, but the would-be appellant went into administration, and the appeal was never pursued.

The High Court had another chance to look at the issue in WaterRower (IPKat), and in that case could not find a way around the closed list issue by finding the work to be one of artistic craftsmanship. The judge therefore had to tackle head on the issue of the tension between assimilated case law (Cofemel etc.) and the closed list, and decided that while the author’s own intellectual creation test remained applicable, the closed list could not be read in compliance with assimilated law. He went on to find that the rowing machine in issue was original within the meaning of Cofemel, but not a work of artistic craftsmanship, and the claim therefore failed. No appeal has been heard.

This is certainly not the end for works of applied art seeking and potentially obtaining copyright protection. Each case will depend on its facts, and there remains the possibility that the Supreme Court would overturn Hensher to make it comply with Cofemel (etc.). However, the increasing pressure on the courts of EU member states to comply with CJEU decisions such as Cofemel and Mio/Konektra (IPKat), and the risk of inconsistent findings in member states as to subsistence, does not apply to UK courts.

Trade marks

The UK has made no changes to its substantive trade mark law, aside from the obvious or technical, e.g. the repeal of the EU Trade Marks Regulation and the removal of references to EU trade marks and member states. EU trade marks were copied and pasted into the UK’s register, meaning that protection was maintained. The UK even maintained EEA exhaustion, out of fear of prices rising.

As a matter of practice, CJEU decisions are so fundamentally part of the trade mark legal corpus in the UK, that it is hard to imagine how significant divergence on any of the most substantive issues, such as the notion of the average consumer, could even happen.

There are, however, areas where EU trade mark law has been subject to criticism in the UK, including from leading IP judges. That most notably includes matters relating to the non-origin functions of trade marks, with Lord Justice Sir Robin Jacob’s “excoriating” critique of the CJEU’s decision in L’Oréal v Bellure (Case C-487/07 and [2010] EWCA Civ 535) being the most prominent one. In Thatchers (IPKat here and here) though, Lord Justice Arnold disagreed with Jacob LJ’s criticisms, suggesting less of an appetite to depart from established EU trade mark law.

There have however been two areas where the UK, respectively, has and might have diverged from EU law and practice:

1. In Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd [2023] EWCA Civ 1451, the Court of Appeal did choose to depart from EU caselaw. The issue concerned s.48(1) of the UK’s Trade Marks Act 1994 (acquiescence), and the CJEU’s decision in Budvar (IPKat).
2. In SkyKick, the Supreme Court restored the High Court’s finding that Sky had applied for the relevant trade mark partly in bad faith, as there was no foreseeable prospect of Sky using the trade mark in respect of those goods/services. While not explicitly departing from EU case law, it led to a change in practice that some have said could spell the end of over-broad specifications.

Design law

The UK sought to maintain alignment with the EU in the common area of what were then known as Community registered and unregistered designs, and are now known as EU registered and unregistered designs. Specifically, the UK legislated for a ‘continuing unregistered design’ right, which applied to designs coming into existence before IP Completion Day and mirrored the tests for subsistence and infringement of the EU right, and ‘supplementary unregistered design’ right, which was the same but for designs coming into existence after IP Completion Day.

Despite the common heritage and legal framework, the supplementary unregistered design and the UK registered designs regime are not reciprocal with EU unregistered and registered designs. The big concern among designers was that first disclosure in the UK could destroy the novelty of a design in the EU, and vice versa. This issue has not been tested, but designers have been looking to rely on simultaneous disclosure as a way of obtaining dual protection.

While owners of Community registered designs received a comparable right in the UK on IP Completion Day, since then designers have needed to file under both regimes, increasing costs and administration.

However, EU design law has not stood still, and the new EU designs Directive and Regulation (Regulation (EU) 2024/2822 and Directive (EU) 2024/2823) came into force in late 2024, with staggered implementation periods running up to 1 July 2026. Those changes, many of which are very significant, are yet to be replicated in the UK. The UK is consulting on modernising its own regime, but as with many things in IP, the consultations have led to little actual reform. This is a classic example of the legislative or regulatory drift that is leading to divergence through no positive decision to diverge.

Patent law

The law itself has been largely unchanged since IP Completion Day, being based on the European Patent Convention. This biggest change has been the creation of the Unified Patent Court (UPC) and Unitary Patent system, in which the UK chose not to seek to participate.

While there is some evidence that litigation is moving from national courts to UPC ones, there is limited evidence of that move affecting the UK, with the number of new claims issued holding up in the consistent 30-60 range, getting to the same level as in 2015 and getting close to the 2017 high-water mark. Similarly, while there has been some variation, the number of judgments issued in England & Wales has remained broadly consistent over the past decade, and is up from the number in 2015. Pharmaceutical litigation remains dominant, despite Paris, Munich and Milan taking London’s spot as the seats of the relevant section of the Central Division.

A significant development has been the emergence of the UPC’s ‘long arm jurisdiction’ principle, whereby UPC courts have established competence to adjudicate on infringement of UK designations of European Patents in some circumstances. The CJEU referral in Dyson v Dreame may shed light on this issue. Meanwhile, the UK courts have also exercised a degree of extraterritoriality in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48.

This issue is largely a reflection of the very close connections between the UK and EU, including the common EPC framework. How it develops over the coming years will be watched closely, as the respective jurisdictions compete to be the forum of choice for patent litigation.

Plant varieties

In Nadorcott (IPKat), the UK High Court considered whether the Tango/Tang Gold variety of mandarins was essentially derived from the Nadorcott variety, and if they were, whether the owner had had a reasonable opportunity to exercise its rights. 

Decisions in this area are rare, and in this case the judge went with the wording of the Plant Varieties Act 1997 which is worded differently from the EU Regulation on Plant Variety Rights, under which the PBR was originally obtained. The judge was able to rely on the UK statute to reach what might have been a different conclusion under the Regulation.

Protection of trade secrets

The Trade Secrets Directive had fairly limited impact in the UK, with the effect being mainly on procedure. This is because the UK already had a high level of protection for confidential information, of which trade secrets is a subset. Those provisions relating to procedure have all been maintained, so there appears to be little divergence between the UK and EU on this front.

Conclusion

The fear among many businesses would be that IP law would diverge significantly, causing additional administrative burdens and differing protection. For the most part, there has been relatively little divergence, but there has been an increase in costs of protecting and enforcing rights in different jurisdictions. Of course, those have not been the only costs such businesses have faced, with increasing administrative burdens for, in particular, transporting goods.

This post has not covered the hot topic of AI, where the EU has legislated much more than the UK. Nor has it covered some of the other IP-adjacent regulation, such as the Digital Services Act. However, there is only so much that can be covered in a blog post.