A good starting point for the future discussion
On September 06, 2017 the European Commission published its position paper in order to determine some important principles for the exit of the UK from the EU - which is expected for the end of March 2019 - in relation to the treatment of some IP rights (trademarks, designs, plant variety right, protected geographical indications, and protected designation of origin), as key points to be included in the Withdrawal Agreement.
The specific purpose of this document is to "give certainty to right holders and those who will be in the process of acquiring rights at the time of withdrawal" and represents the vision of the EU in relation to the above-mentioned specific IP matters that will be pursued during the Brexit negotiations.
In particular, in its position paper, the European Commission has stated that at the date of the withdrawal of the UK from the EU:
- the European Union IP rights previously granted should be automatically recognized by the UK both in protection and enforcement terms if necessary, on the basis of specific domestic legislation - comparable with EU law - that should be introduced regarding geographical indications, the protection of designations of origin and the other protected terms of agricultural products (in relation to which the UK does not currently have any domestic legislation). In particular, the holder of said IP rights have to be recognized as the holder of an enforceable intellectual property right in relation to UK territory comparable to the right provided by EU law. Moreover, according to the EU Commission, this implementation should include the determination of the renewal dates, the respect of priority and seniority principles and the adaptation of 'genuine use' requirements and 'reputation' rules to the specific situation under consideration. Lastly, the paper states that said implementations should not result in additional charges for the right holder and any administrative requirement should be kept to a minimum;
- the European Union IP rights applications still pending should be not lost, considering that the applicant should be entitled to retain the priority date of the original EU application when applying for an equivalent UK right following Brexit. It should be noted that, unlike granted rights, there is no proposal for an automatic transfer of pending rights. Therefore, according to this position, separate application in the UK might be required;
- for the European Union applications for supplementary protection certificates and for the extension of their duration submitted before the withdrawal date before a UK authority, the relative applicant should continue to be entitled to obtain in the UK said supplementary protection certificate or said extension of a previously granted certificate in the same way as provided for by EU law;
- European Union IP rights already exhausted remain exhausted in both the EU and the UK.
Whilst there are many questions that will need addressing and a corresponding position paper from the UK on the above-mentioned principles has to be issued, it seems that this position paper of the EU Commission represents a good starting point for the future discussion in relation to IP matters after-Brexit.