Brexit: The IP Position Paper and trade marks

Dr Ilanah Simon Fhima, Reader in Intellectual Property and Co-Director of the Institute of Brand and Innovation Law at University College London (UCL), and perhaps the earliest-serving Emeritus Kat, has kindly shared some thoughts regarding the EU27 Position Paper as it may affect trade mark law.

“The EU27 Position Paper on IP Rights, published on 7 September, contains main principles of the EU’s position towards the treatment of intellectual property rights during the Brexit negotiations. Significant areas of intellectual property are harmonised in Europe and various rights are protected via pan-EU unitary rights. Moreover, the exercise of IP rights is intimately related with the free movement of goods. Thus IP can be expected to be a key part of the negotiations.

The Position Paper is notable for what it leaves out, as much as what it includes, but I'd like to do a small bit of crystal- ball gazing in relation to two concrete positions taken, and their effect on trade mark law:

1. The holder of an IPR having unitary character at the time of withdrawal must be recognised as having a UK right 'comparable' to the right provided by EU law - the term comparable' is (deliberately?) vague. Does it mean the same species of protection (unlikely because the UK will clearly retain trade mark and design protection etc.) or the same substantive detailed protection as offered under the unitary regimes? If it is the latter, it seems likely that the UK will maintain the existing trade mark system for the foreseeable future. It is improbable that owners of UK trade mark would be happy with less protection than their unitary right-holding counterparts. Since the EUTMs last forever, or at least until they cease to be distinctive, it seems the same should be true of the eventual UK law protecting them. This also demonstrates the continued need for the UK to implement the Recast Directive (a Directive requiring Member States to make certain modernising/clarificatory changes to their trade mark laws with a transposition date of 15 January 2019), despite the relevant date being so close to the Brexit date of 29 March 2019.

2. Trade mark rights in goods which were put on the market prior to Brexit must remain exhausted after Brexit. On a practical level, the result of this could be chaos if the settlement post-Brexit is for anything other than an EU exhaustion rule. Remember that exhaustion of rights pertains only to the individual batch put on the market, and not to otherwise identical goods. Trade marks owners presumably would be able to track which (otherwise identical) goods were exhausted via batch codes etc., but how will importers and reseller be able to do the same?”