IP After Brexit

IP After Brexit
26 Jan 2020
EU Intellectual Property Office, Alicante
Author Kristof Roomp Licence CC BY 2.0 Source Wikipedia
Jane Lambert1
Between 1 Jan 1972 and 31 Dec 2020, the laws of the UK were transformed by Council
regulations and directives. Nowhere was that more apparent than in intellectual property
where new rights such as database rights and supplementary protection certificates were
introduced as well as new legal concepts such as exhaustion of rights. The domestic laws of
the member states were harmonized in such areas as industrial designs and trade marks.
EU wide unitary rights such as the EU trade mark, registered Community design and
Community plant varieties were introduced alongside approximated national intellectual
property rights. All that stopped at 23:00 on 31 Dec 2020 when EU law ceased to apply to
the UK in accordance with art 50 (3) of the Treaty of European Union.
1
Barrister, 4-5 Gray’s Inn Square, London, WC1R 5AH, Tel +44 (0)20 7404 5252, Email jane.lambert@nipclaw.com,
www.nipcclaw.com
1

2. The Timeline
3. The European Union (Withdrawal) Act 2018
3.1. This statute received royal assent on 26 June 2018 before it was known whether HMG’s
negotiations for a withdrawal agreement with the Commission would be successful.
3.2. S.1 repealed the European Communities Act 1972 from the date on which the UK was
left the EU which was expected to be 29 March 2019:
2
Art 50 TEU Provisions Implementation
“(1) Any Member State may decide to
withdraw from the Union in accordance with
its own constitutional requirements.”
European Union Referendum Act 2015
which provided for a referendum in June
2016.
“2. A Member State which decides to
withdraw shall notify the European Council
of its intention.”
Prime Minister’s letter of 29 March 2017 to
the President of the Council.
“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……”
Achieved by the Agreement on the
withdrawal of the United Kingdom of Great
Britain and Northern Ireland from the
European Union and the European Atomic
Energy Community (“the withdrawal
agreement”) and the Political Declaration
setting out the framework for the future
relationship between the European Union
and the United Kingdom (“the political
declaration”).
“3. 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.”
The 2-year notification period was extended
from 29 March 2019 to 31 Jan 2020 by
several agreements between the Council
and the British government. The UK left the
EU on 31 Jan 2020. However, art 126 of the
withdrawal agreement provided for a year’s
implementation period to negotiate an
agreement on the UK’s future relationship
with the EU. Art 127 provided for EU law to
continue to apply to the UK until 31 Dec
2020. The parties negotiated the Trade and
Cooperation Agreement between the
European Union and the European Atomic
Energy Community, of the one part, and the
United Kingdom of Great Britain and
Northern Ireland, of the other part. That
agreement came into force at 23:00 on 31
Dec 2020. At the same time, European Law
ceased to apply to the UK in accordance
with art 50 (3) of the TEA and art 127 of the
withdrawal agreement.

“2. Repeal of the European Communities Act 1972
The European Communities Act 1972 is repealed on [IP completion day].”
3.3. S.2 provided machinery for preserving legislation that had been passed to comply with
a directive such as the Trade Marks Act 1994:
“2. Saving for EU-derived domestic legislation
(1) EU-derived domestic legislation, as it has effect in domestic law immediately before
[IP completion day], continues to have effect in domestic law on and after [IP completion
day].
(2) In this section “EU-derived domestic legislation” means any enactment so far as—
(a) made under section 2(2) of, or paragraph 1A of Schedule 2 to, the European
Communities Act 1972,
(b) passed or made, or operating, for a purpose mentioned in section 2(2)(a) or (b) of
that Act,
(c) relating to anything—
(i) which falls within paragraph (a) or (b), or
(ii) to which section 3(1) or 4(1) applies, or
(d) relating otherwise to the EU or the EEA, but does not include any enactment
contained in the European Communities Act 1972.
(3) This section is subject to section 5 and Schedule 1 (exceptions to savings and
incorporation).”
3.4. S.3 provided machinery for incorporating regulations such as the Community Design
Regulation into the domestic laws of the UK.
“3 (1) Direct EU legislation, so far as operative immediately before [IP completion day], forms
part of domestic law on and after [IP completion day].”
S.3 (2) (a) includes any regulation in the definition of “direct EU legislation”.
Regulations that have been incorporated into domestic law with amendments include
Council Regulation (EC) No 469/2009 on supplementary protection certificates for medicinal
products OJ L 152, 16.6.2009, p. 1–10 and Council Regulation (EU) No 1151/2012 on
quality schemes for agricultural products and foodstuffs OJ L 343, 14.12.2012, p. 1–29,
3.5. S.3 (1) is mitigated by s.8 of the Act:
“A Minister of the Crown may by regulations make such provision as the Minister considers
appropriate to prevent, remedy or mitigate—
(a) any failure of retained EU law to operate effectively, or
(b) any other deficiency in retained EU law,
arising from the withdrawal of the United Kingdom from the EU.”
3.6. S.6 (3) provides:
“Any question as to the validity, meaning or effect of any retained EU law is to be decided,
so far as that law is unmodified on or after [IP completion day] and so far as they are
relevant to it—
(a) in accordance with any retained case law and any retained general principles of EU law,
and
(b) having regard (among other things) to the limits, immediately before [IP completion day],
of EU competences.”
3

“Retained case law” includes retained “domestic case law” and “retained EU case law” as
defined by s.6 (7).
3.7. S.6 (1) provides:
“A court or tribunal—
(a) is not bound by any principles laid down, or any decisions made, on or after [IP
completion day] by the European Court, and
(b) cannot refer any matter to the European Court on or after [IP completion day].”
However, s.3 (2) permits a court or tribunal to have regard to anything done on or after [IP
completion day] by the European Court, another EU entity or the EU so far as it is relevant to
any matter before the court or tribunal.
4. European Union (Withdrawal Agreement) Act 2020
4.1. This statute implemented the withdrawal agreement.
4.2. S.1 inserts a new s.1A into the European Union (Withdrawal) Act 2018 which suspends
the repeal of the European Communities Act 1972 during the implementation period.
4,3, S.5 inserts a new s.7A into the European Union (Withdrawal Agreement) 2018 which
incorporates the withdrawal agreement into domestic law.
5. Trade Marks
5.1.1. Art 54 (1) (a) of the withdrawal agreement provides:
“(1) The holder of any of the following intellectual property rights which have been registered
or granted before the end of the transition period shall, without any re-examination, become
the holder of a comparable registered and enforceable intellectual property right in the
United Kingdom under the law of the United Kingdom:
(a) the holder of a European Union trade mark registered in accordance with Regulation
(EU) 2017/1001 of the European Parliament and of the Council shall become the holder of a
trade mark in the United Kingdom, consisting of the same sign, for the same goods or
services;”
5.1.2. Reg 2 of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019
No, 268 (“268”)) as amended by reg. 8 of The Intellectual Property (Amendment etc.) (EU
Exit) Regulations 2020 (SI 2019 No 1060 (“1060”)) provides:
“Certain trade marks registered as European Union trade marks to have effect under
the 1994 Act
2. Schedule 1 contains amendments to the 1994 Act to make provision for certain trade
marks registered as European Union trade marks to be treated as registered trade marks
from [IP completion day]2
and about certain applications for such marks made before [IP
completion day].”
5.1.3. Para. 2 of Sched. 1 as amended inserts a new s.52A intro the Trade Marks Act 1994:
2
Defined by s,39 (1) of the European Union (Withdrawal Agreement) Act 2020 as “31 December 2020 at 11.00 p.m.”
4

“52A. Certain trade marks registered as European Union trade marks to be treated
as registered trade marks
Schedule 2A makes provision for European Union trade marks (including certain expired and
removed marks) to be treated as registered trade marks with effect from [IP completion day]
and about certain applications for a European Union trade mark made before [IP completion
day].”
5.1.4. Para 1 (1) (2) and (3) of Sched. 2A to the Trade Marks Act 1994 as amended
implements art 54 (1) (a) of the withdrawal agreement:
“A trade mark registered as an existing EUTM to be treated as registered under this
Act
1.—(1) A trade mark which is registered in the EUTM Register immediately before IP
completion day] (an “existing EUTM”) is to be treated on and after [IP completion day] as if
an application had been made, and the trade mark had been registered, under this Act in
respect of the same goods or services as the existing EUTM is registered in the EUTM
Register.
(2) A registered trade mark which comes into being by virtue of sub-paragraph (1) is referred
to in this Act as a comparable trade mark (EU).
(3) This Act applies to a comparable trade mark (EU) as it applies to other registered trade
marks except as otherwise provided in this Schedule.”
5.2.1. Art 55 (1) of the withdrawal agreement stipulates:
“Registration procedure
(1). The registration, grant or protection pursuant to Article 54(1) ….. of this Agreement shall
be carried out free of charge by the relevant entities in the United Kingdom, using the data
available in the registries of the European Union Intellectual Property Office,....”
5.2.2. Para 1 (7) implements art 55 (1) of the withdrawal agreement:
“(7) Nothing in this Act authorises the imposition of a fee, or the making of provision by rules
or regulations which authorises the imposition of a fee, in respect of any matter relating to a
comparable trade mark (EU) (see instead provision made by regulations under Schedule 4
to the European Union (Withdrawal) Act 2018).”
However, art 55 (4) of the withdrawal agreement permits fees to be charged on renewal and
at other times and reg 3 and Sched. 2 provides for fees payable in respect of a comparable
trade mark.
5.2.3. Art 55 (2) of the withdrawal agreement requires:
“For the purposes of paragraph 1, holders of the intellectual property rights referred to in
Article 54 (1) …… shall not be required to introduce an application or to undertake any
particular administrative procedure. Holders of intellectual property rights referred to in
Article 54 (1) shall not be required to have a correspondence address in the United Kingdom
in the 3 years following the end of the transition period.”
5.2.4. Para 1 (1) of the new Sched 2A provides that the new comparable trade mark comes
into being automatically.
5

5.2.5. Art 55 (4) of the withdrawal agreement permits the surrender of rights and para. 2 of
the new Sched. 2A permits EUTM holders to decline a comparable trade mark:
“Opt out
2.—(1) Subject to sub-paragraph (2), the proprietor of an existing EUTM may, at any time on
or after [IP completion day], serve notice on the registrar that the trade mark is not to be
treated as if the trade mark had been registered under this Act (an “opt out notice”).
(2) An opt out notice may not be served where on or after [IP completion day]—
(a) the comparable trade mark (EU) has been put to use in the United Kingdom by the
proprietor or with the proprietor’s consent (which use includes affixing the trade mark to
goods or to the packaging of goods in the United Kingdom solely for export purposes);
(b) the comparable trade mark (EU) (or any right in or under it) has been made the subject of
an assignment, licence, security interest or any other agreement or document except for an
assent by personal representatives in relation to the comparable trade mark (EU); or
(c) proceedings based on the comparable trade mark (EU) have been initiated by the
proprietor or with the proprietor’s consent.
(3) An opt out notice must—
(a) identify the existing EUTM; and
(b) include the name and address of any person having an interest in the existing EUTM
which had effect before [IP completion day] in the United Kingdom, and in respect of which
an entry was recorded in the EUTM Register.
(4) An opt out notice is of no effect unless the proprietor in that notice certifies that any such
person—
(a) has been given not less than three months’ notice of the proprietor’s intention to serve an
opt out notice; or
(b) is not affected or if affected, consents to the opt out.
(5) Where a notice has been served in accordance with this paragraph—
(a) the comparable trade mark (EU) which derives from the existing EUTM ceases with
effect from [IP completion day] to be treated as if it had been registered under this Act; and
(b) the registrar must, where particulars of the comparable trade mark (EU) have been
entered in the register, remove the comparable trade mark (EU) from the register.”
5.3.1. Art 54 (3) of the withdrawal agreement provides:
“Notwithstanding paragraph 1, if an intellectual property right referred to in that paragraph is
declared invalid or revoked, or, in the case of a Community plant variety right, is declared
null and void or is cancelled, in the Union as the result of an administrative or judicial
procedure which was ongoing on the last day of the transition period, the corresponding right
in the United Kingdom shall also be declared invalid or revoked, or declared null and void, or
be cancelled. The date of effect of the declaration or revocation or cancellation in the United
Kingdom shall be the same as in the Union.
By way of derogation from the first subparagraph, the United Kingdom shall not be obliged to
6

declare invalid or to revoke the corresponding right in the United Kingdom where the
grounds for the invalidity or revocation of the European Union trade mark or registered
Community design do not apply in the United Kingdom.”
5.3.2. Reg 9 (b) (ii) of The Intellectual Property (Amendment etc.) (EU Exit) Regulations
2020 inserts a new para 21A into the new Sched. 2A to the Trade Marks Act 1994:
“Existing EUTM: effect of invalidity or revocation
21A.—(1) This paragraph applies where, on IP completion day, an existing EUTM is the
subject of proceedings under Article 58 (Grounds for revocation), 59 (Absolute grounds for
invalidity) or 60 (Relative grounds for invalidity) which have been instituted but not finally
determined before IP completion day (“cancellation proceedings”).
(2) Subject to sub-paragraph (4), where—
(a) the existing EUTM is revoked or declared invalid (whether wholly or partially) pursuant to
a decision in the cancellation proceedings which is finally determined, and
(b) the registrar has—
(i) received notice of the situation referred to in paragraph (a) (“a cancellation notice”), or
(ii) otherwise become aware of the situation referred to in paragraph (a),
the registration of the comparable trade mark (EU) which derives from the existing EUTM
must be revoked or declared invalid to the same extent as the existing EUTM.
(3) Where (by virtue of sub-paragraph (2)) the registration of a comparable trade mark (EU)
is revoked or declared invalid to any extent, the registrar must—
(a) remove the comparable trade mark (EU) from the register (where the revocation or
declaration of invalidity relates to all the goods or services for which the existing EUTM was
registered); or
(b) amend the entry in the register listing the goods or services for which the comparable
trade mark (EU) is registered (where the revocation or declaration of invalidity relates to only
some of the goods or services for which the existing EUTM was registered).
(4) The registration of a comparable trade mark (EU) must not be revoked or declared invalid
under sub-paragraph (2) where the grounds on which the existing EUTM was revoked or
declared invalid (whether wholly or partially) would not apply or would not have been
satisfied in relation to the comparable trade mark (EU)—
(a) if the comparable trade mark (EU) had existed as at the date the cancellation
proceedings were instituted, and
(b) an application for the revocation or a declaration of invalidity of the comparable trade
mark (EU) based on those grounds had been made on that date under section 46 or 47 (as
the case may be).
(5) Where a comparable trade mark (EU) is revoked or declared invalid to any extent
pursuant to this paragraph—
(a) the rights of the proprietor are deemed to have ceased to that extent as from the date on
which the rights of the proprietor of the existing EUTM are deemed to have ceased under the
EUTM Regulation;
(b) subject to any claim for compensation for damage caused by negligence or lack of good
faith on the part of the proprietor or a claim for restitution based upon the unjust enrichment
of the proprietor, the revocation or invalidity of the comparable trade mark (EU) does not
affect—
(i) a decision arising from infringement proceedings which has been finally determined and
which has been enforced prior to the date on which the entry in the register of the
comparable trade mark (EU) has been removed or amended pursuant to sub-paragraph (3)
(“the decision date”);
(ii) any contract entered into prior to the decision date to the extent that it has been
performed prior to the decision date, subject to the right of a party to the contract to claim the
repayment of any consideration paid under the contract where, having regard to the
circumstances, it is fair and equitable for such repayment to be made.
(6) A cancellation notice may be submitted to the registrar by any person.
7

(7) For the purposes of this paragraph—
(a) proceedings are instituted if an application or counterclaim for revocation or for a
declaration of invalidity—
(i) has been filed (and not subsequently withdrawn) with the European Union Intellectual
Property Office or a court designated for the purposes of Article 123, and
(ii) meets the requirements for being accorded a filing date under the European Union Trade
Mark Regulation and Commission Delegated Regulation (EU) 2018/625 of 5th March 2018;
(b) a decision is finally determined when—
(i) it has been determined, and
(ii) there is no further possibility of the determination being varied or set aside (disregarding
any power to grant permission to appeal out of time).”
5.3.3. Reg 11 (c) of the same regulations inserts a new rule 43A into the Trade Mark Rules
2008:
“Invalidation or revocation of Existing EUTM: Cancellation notice and procedure on
application for derogation; Schedule 2A paragraph 21A
43A.—(1) A cancellation notice under paragraph 21A of Schedule 2A must—
(a) identify the existing EUTM by the number under which the existing EUTM was registered
in the EUTM Register immediately before IP completion day, together with a representation
of the mark,
(b) include the following details with regard to the decision pursuant to which the existing
EUTM was revoked or declared invalid (whether wholly or partially)—
(i) the date of the decision (including any decision determined on appeal),
(ii) whether the revocation or declaration of invalidity related to all or part of the goods or
services for which the existing EUTM was registered,
(iii) where the existing EUTM was revoked (whether wholly or partially) the date on which the
revocation took effect,
(c) be accompanied by a copy of the decision (including any decision determined on appeal)
pursuant to which the existing EUTM was revoked or declared to be invalid, and
(d) include a statement confirming that the decision pursuant to which the existing EUTM
was revoked or declared invalid (whether wholly or partially) has been finally determined.
(2) Where a cancellation notice is submitted to the registrar by the proprietor of the
comparable trade mark (EU) which derives from the existing EUTM, the cancellation notice
must be accompanied by—
(a) a notice (a “derogation notice”) in writing to the registrar that, based upon the provisions
in paragraph 21A(4) of Schedule 2A, the comparable trade mark (EU) should not be revoked
or declared invalid (whether wholly or partially), and
(b) a statement of the reasons why paragraph 21A(4) of Schedule 2A applies (a “statement”)
together with relevant supporting evidence (“supporting evidence”).
(3) Where the proprietor of a comparable trade mark (EU) submits a cancellation notice to
the registrar but fails to send a derogation notice, a statement or supporting evidence, the
registration of the comparable trade mark (EU) which derives from the existing EUTM
identified in the cancellation notice must be revoked or declared invalid to the same extent
as the existing EUTM, unless the registrar directs otherwise.
(4) Where the registrar receives a cancellation notice submitted by a person other than the
proprietor of the comparable trade mark (EU) which derives from the existing EUTM, the
registrar must as soon as reasonably practicable after receipt of the cancellation notice—
(a) send a copy of the cancellation notice to the proprietor of the comparable trade mark
(EU) which derives from the existing EUTM identified in the cancellation notice, and
(b) notify the proprietor of the comparable trade mark (EU) which derives from the existing
EUTM that based upon the revocation or declaration of invalidity of the existing EUTM, the
comparable trade mark (EU) will be revoked or declared invalid to the same extent as the
corresponding EUTM.
8

(5) Where the registrar has become aware of the situation referred to in paragraph 21A(2)(a)
of Schedule 2A otherwise than by a cancellation notice, the registrar must as soon as
reasonably practicable after becoming aware of that situation, notify the proprietor of the
comparable trade mark (EU) which derives from the existing EUTM in the terms provided in
paragraph (4)(b).
(6) The proprietor of a comparable trade mark (EU) referred to in paragraph (4) and (5)
must, within such period of not less than one month as may be specified in the notice
referred to in paragraph (4)(b) and (5), send to the registrar a derogation notice
accompanied by a statement and supporting evidence as referred to in paragraph (2), failing
which the registration of the comparable trade mark (EU) must be revoked or declared
invalid to the same extent as the corresponding EUTM, unless the registrar directs
otherwise.
(7) The registrar must, in reaching a decision as to whether paragraph 21A(4) of Schedule
2A applies to a comparable trade mark (EU), have regard to the statement and supporting
evidence filed by the proprietor of the comparable trade mark (EU) and must send written
notice of the decision to the proprietor, stating the reasons for that decision.
(8) For the purposes of any appeal against a decision referred to in sub-paragraph (7), the
date on which the notice is sent must be taken to be the date of the decision. ” .”.
(d) in rule 47(n) (to be inserted by paragraph 11(6)), after “corresponding EUTM” insert “,
and where the corresponding EUTM is subject to cancellation proceedings, that cancellation
is pending”.
5.4. Art 54 (4) of the withdrawal agreement requires a comparable trade mark to have as
its first renewal date the renewal date of the corresponding EU trade mark. This appears to
have been implemented by para 1 (1) of the new Sched. 2A of the Trade Marks Act 1994 in
that an existing EUTM is to be treated on and after [IP completion day] as if an application
had been made, and the trade mark had been registered, under this Act in respect of the
same goods or services as the existing EUTM is registered in the EUTM Register.
“In respect of trade marks in the United Kingdom referred to in point (a) of paragraph 1 of
this Article, the following shall apply:
(a) the trade mark shall enjoy the date of filing or the date of priority of the European Union
trade mark and, where appropriate, the seniority of a trade mark of the United Kingdom
claimed under Article 39 or 40 of Regulation (EU) 2017/1001”
5.5.2. The requirement in art 54 (5) (a) “the trade mark shall enjoy the date of filing or the
date of priority of the European Union trade mark”, para. 1 (4) of Sched. 2A provides:
“A comparable trade mark (EU) is deemed for the purposes of this Act to be registered as of
the filing date accorded pursuant to Article 32 to the application which resulted in the
registration of the corresponding EUTM and that date is deemed for the purposes of this Act
to be the date of registration.”
5.5.3. Para. 12 (2) of Sched, 2A provides:
“The proprietor of the comparable trade mark (EU) which derives from the existing EUTM is
to be treated on and after exit day as having the same claim of priority.”
5.5.4. Para 13 (2) of Sched. 2A provides:
“The comparable trade mark (EU) which derives from the existing EUTM is to be treated on
and after exit day as if it had a valid claim to seniority of the senior mark.”
9

“the trade mark shall not be liable to revocation on the ground that the corresponding
European Union trade mark had not been put into genuine use in the territory of the United
Kingdom before the end of the transition period;”
5.6.2. Para. 9 of Sched. 2A provides:
“9 (1) Section 47 applies where an earlier trade mark is a comparable trade mark (EU),
subject to the modifications set out below.
(2) Where the period of five years referred to in sections 47(2A)(a) and 47(2B) (the “five-year
period”) has expired before [IP completion day]—
(a) the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as
references to the corresponding EUTM ; and
(b) the references in section 47 to the United Kingdom include the European Union.
(3) Where [IP completion day] falls within the five-year period, in respect of that part of the
five-year period which falls before [IP completion day]—
(a) the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as
references to the corresponding EUTM ; and
(b) the references in section 47 to the United Kingdom include the European Union.”
5.7.1. Art 54 (5) (c) of the withdrawal agreement provides:
“the owner of a European Union trade mark that has acquired a reputation in the Union shall
be entitled to exercise in the United Kingdom rights equivalent to those provided for in point
(c) of Article 9(2) of Regulation (EU) 2017/1001 and point (a) of Article 5(3) of Directive (EU)
2015/2436 in respect of the corresponding trade mark on the basis of the reputation
acquired in the Union by the end of the transition period and thereafter the continuing
reputation of that trade mark shall be based on the use of the mark in the United Kingdom.”
5.7.2. Para. 10 of Sched. 2A provides:
“Reputation of a comparable trade mark (EU)
10.—(1) Sections 5 and 10 apply in relation to a comparable trade mark (EU), subject to the
modifications set out below.
(2) Where the reputation of a comparable trade mark (EU) falls to be considered in respect
of any time before exit day, references in sections 5(3) and 10(3) to—
(a) the reputation of the mark are to be treated as references to the reputation of the
corresponding EUTM; and
(b) the United Kingdom include the European Union.”
5.8.1. Art 56 of the withdrawal agreement requires:
“The United Kingdom shall take measures to ensure that natural or legal persons who have
obtained protection before the end of the transition period for internationally registered trade
marks …….. enjoy protection in the United Kingdom for their trade marks ……. in respect of
those international registrations.”
5.8.2. Reg. 6 of The Designs and International Trade Marks (Amendment etc.) (EU Exit)
Regulations 2019 (SI 2019 No. 638) as amended by para 16 of The Intellectual Property
(Amendment etc.) (EU Exit) Regulations 2020 (SI 2020 No 638) provides:
“Schedule 4 contains amendments to the 1994 Act to make provision for certain international
trade marks protected in the European Union to be treated as registered trade marks under
the 1994 Act from [IP completion day] and about certain applications for the protection of an
10

international trade mark in the European Union and transformation applications made before
[IP completion day].”
5.8.3. Para 2 of Sched, 4 of SI 2019 No 638 as amended by para 22 of SI 2020 No 1050
inserts a new s.54A into the Trade Marks Act 1994:
“Certain international trade marks protected in the European Union to be treated as
registered trade marks
54A. Schedule 2B makes provision for international trade marks protected in the European
Union (including certain expired marks) to be treated as registered trade marks with effect
from [IP completion day] and about certain applications for the protection of an international
trade mark in the European Union and transformation applications made before [IP
completion day].”
5.8.4. Para 3 of Sched, 4 of SI 2019 No 638 as amended by para 22 of SI 2020 No 1050
inserts a new Sched. 2B to the Trade Marks Act 1994:
5.8.5. Para 1 of the new Sched. 2B provides:
“A trade mark which, immediately before [IP completion day], is an international trade mark
which is protected in the European Union in accordance with Article 189 (2) of the European
Union Trade Mark Regulation (an “existing IR(EU)”) is to be treated on and after [IP
completion day] as if an application had been made, and the trade mark had been
registered, under this Act in respect of the same goods or services in respect of which the
international trade mark is protected in the European Union.”
5.9.1. Art 59 (1) of the withdrawal agreement provides:
“Where a person has filed an application for a European Union trade mark ….. in
accordance with Union law before the end of the transition period and where that application
was accorded a date of filing, that person shall have, for the same trade mark in respect of
goods or services which are identical with or contained within those for which the application
has been filed in the Union ….. the right to file an application in the United Kingdom within 9
months from the end of the transition period. An application made pursuant to this Article
shall be deemed to have the same filing date and date of priority as the corresponding
application filed in the Union and, where appropriate, the seniority of a trade mark of the
United Kingdom claimed under Article 39 or 40 of Regulation (EU) 2017/1001”
5.9.2. Part 3 of Sched. 2A as amended implements art 59 (1) in respect of comparable trade
marks (EU):
“PART 3
Applications for European Union trade marks which are pending on exit day
Application of Part
24.—(1) This Part applies to an application for registration of a trade mark under the EUTM
Regulation in respect of which the conditions in sub-paragraph (2) are satisfied (an “existing
EUTM application”).
(2) The conditions referred to in sub-paragraph (1) are—
(a) the application has been accorded a filing date pursuant to Article 32; and
(b) as at the time immediately before exit day, the application has been neither granted nor
refused by the European Union Intellectual Property Office.
Application for registration under this Act based upon an existing EUTM application
25.—(1) This paragraph applies where a person who has filed an existing EUTM application
or a successor in title of that person applies for registration of the same trade mark under
this Act for some or all of the same goods or services.
11

(2) Where an application for registration referred to in sub-paragraph (1) is made within a
period beginning with exit day and ending with the end of the relevant period—
(a) the relevant date for the purposes of establishing which rights take precedence is the
earliest of—
(i) the filing date accorded pursuant to Article 32 to the existing EUTM application;
(ii) the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to
Article 35 in respect of the existing EUTM application; and
(b) the registrability of the trade mark shall not be affected by any use of the mark in the
United Kingdom which commenced in the period between the date referred to in paragraph
(a) and the date of the application under this Act.
(3) In paragraph (2), the “relevant period” means the period of nine months beginning with
the day after that on which exit day falls.
Right to claim seniority where seniority has been claimed by an existing EUTM
application
26.—(1) Where an existing EUTM application claims seniority of a trade mark which trade
mark (“the senior mark”) is a registered trade mark or a protected international trade mark
(UK), the applicant may claim seniority of the senior mark in an application for registration of
a trade mark (“a relevant mark”) pursuant to this Part.
(2) The effect of a seniority claim made pursuant to sub-paragraph (1) is that where following
the registration of the relevant mark the proprietor of that mark surrenders the senior mark or
allows it to lapse (wholly or partially), subject to paragraph 27, the proprietor of the relevant
mark is deemed to continue to have the same rights as the proprietor would have had if the
senior mark had continued to be registered in respect of all the goods or services for which it
was registered prior to the surrender or lapse.
(3) Provision may be made by rules as to the manner of claiming seniority pursuant to this
paragraph.
Determination of invalidity and liability to revocation in relation to claim of seniority
under paragraph 26
27.—(1) Where a relevant mark has claimed seniority of a registered trade mark which has
been—
(a) removed from the register under section 43; or
(b) surrendered under section 45,
any person may apply to the registrar or to the court for the declaration set out in
sub-paragraph (2).
(2) The declaration is that, if the trade mark had not been so removed or surrendered, the
registration of the trade mark would have been liable to be revoked under section 46 with
effect from a date specified in the declaration or declared invalid under section 47.
(3) Where the declaration is that had the trade mark not been so removed or surrendered,
the registration of it would have been liable to be—
(a) revoked under section 46 with effect from a date prior to—
(i) the filing date accorded pursuant to Article 32 to the existing EUTM application on which
the application for registration of a relevant mark is based where there has been no claim of
priority; or
(ii) the priority date (if any) accorded pursuant to a right of priority claimed pursuant to Article
35 in respect of the existing EUTM application on which the registration of a relevant mark is
based where there has been a claim of priority; or
(b) declared invalid under section 47,
the seniority claimed for the relevant mark is to be treated as if it never had effect.
12

(4) Where a relevant mark has claimed seniority of a protected international trade mark (UK)
which has been—
(a) removed from the register of trade marks maintained by the International Bureau for the
purposes of the Madrid Protocol; or
(b) surrendered under the Madrid Protocol,
any person may apply to the registrar or to the court for the declaration set out in
sub-paragraph (5).
(5) The declaration is that, if the trade mark had not been so removed or surrendered, the
protection of the trade mark in the United Kingdom would have been liable to be revoked
under section 46 with effect from a date specified in the declaration or declared invalid under
section 47.
(6) Where the declaration is that had the trade mark not been so removed or surrendered,
the registration of it would have been liable to be—
(a) revoked under section 46 with effect from a date prior to—
(i) the filing date accorded pursuant to Article 32 to the existing EUTM application on which
the application for registration of a relevant mark is based where there has been no claim of
priority; or
(ii) the priority date (if any) accorded pursuant to a right of priority claimed pursuant to Article
35 in respect of the existing EUTM application on which the registration of a relevant mark is
based where there has been a claim of priority; or
(b) declared invalid under section 47,
the seniority claimed for the relevant mark is to be treated as if it never had effect.
(7) References in sub-paragraphs (5) and (6) to sections 46 and 47 are to those sections as
they apply to a protected international trade mark (UK) under an order made pursuant to
section 54.
(8) Where a trade mark has been surrendered or allowed to lapse in respect of only some of
the goods or services for which it is registered, the declaration in sub-paragraphs (2) and (5)
is that if the goods or services had not been removed from the registration, the registration of
the trade mark would have been liable to be revoked under section 46 with effect from a date
specified in the declaration or declared invalid under section 47 and sub-paragraphs (3) and
(6) shall be construed accordingly.
(9) The provisions of paragraph 15 apply in relation to an application under this paragraph as
they apply to an application under paragraph 14.”
5.9.3. Part 3 of Sched. 2B as amended implements art 59 (1) in respect of comparable trade
marks (IR).
7. Registered Designs
6.1.1. Art 54 (1) (b) of the withdrawal agreement provides:
“The holder of any of the following intellectual property rights which have been registered or
granted before the end of the transition period shall, without any re-examination, become the
holder of a comparable registered and enforceable intellectual property right in the United
Kingdom under the law of the United Kingdom:
…………………………….
the holder of a Community design registered and, where applicable, published following a
deferral of publication in accordance with Council Regulation (EC) No 6/2002 shall become
the holder of a registered design right in the United Kingdom for the same design,”
13

6.1.2. Implemented by reg. 5 of The Designs and International Trade Marks (Amendment
etc.) (EU Exit) Regulations 2019 as amended by reg 15 of The Intellectual Property
(Amendment etc.) (EU Exit) Regulations 2020:
“Schedule 3 contains the following amendments to the Registered Designs Act 1949.
(a) for certain registered Community designs to be treated as registered under the 1949 Act
from [IP completion day] and about certain applications for registered Community designs
made before [IP completion day]; and
(b) for certain international registered designs designating the European Union to be treated
as registered under the 1949 Act from [IP completion day] and about certain applications for
international designs designating the European Union made before [IP completion day].”
6.1.3. Para. 2 of Sched. 3 inserts a new s.12A into the Registered Designs Act 1949:
“Schedule 1A makes provision—
(a) for registered Community designs (including certain designs whose registration has
expired or which have been removed from the register) to be treated as registered under this
Act with effect from [IP completion day], and
(b) about certain applications for registered Community designs made before [IP completion
day].”
6.1.4. Para 3 of Sched. 3 inserts a new Sched. 1A into the Registered Designs Act 1949.
6.1.5. Para 1 (1), (2) and (3) of the new Sched. 1A provides as follows:
“1 (1) A design which, immediately before [IP completion day], is entered in the RCD register
and has been published in the Community Designs Bulletin as mentioned in Article 73(1) (an
“existing registered Community design”) is to be treated on and after exit day as if an
application for its registration had been made, and it had been registered, under this Act.
(2) A registered design which comes into being by virtue of sub-paragraph (1) is referred to
in this Schedule as a “re-registered design”.
(3) This Act applies to a re-registered design as it applies to other registered designs except
as otherwise provided in this Schedule.
“The registration, grant or protection pursuant to Article 54 (1) …. of this Agreement shall be
carried out free of charge by the relevant entities in the United Kingdom, using the data
available in the registries of the European Union Intellectual Property Office,....... .”
6.2.2. Para 1 (5) of Sched. 1A implements this requirement:
“Nothing in this Act authorises the imposition of a fee, or the making of provision by rules or
regulations which authorises the imposition of a fee, in respect of any matter relating to a
re-registered design (see instead provision made by regulations under Schedule 4 to the
European Union (Withdrawal) Act 2018).”
6.2.3. However, art 55 (4) of the withdrawal agreement permits fees to be charged on the
renewal of re-registered and re-registered international designs and at other times. Reg. 7
and Part 1 of Sched. 5 as amended provides for fees for such fees.
14

6.2.4. Art 55 (4) also permits the surrender of rights. Para. 3 of the new Sched. 1A permits
registered Community design holders to decline a re-registered design. Similarly, para 3 of
Sched, 1B permits a protected international registered design (EU)) holder to recline a
re-registered international design.
6.3.1.Art 55 (2) requires:
“For the purposes of paragraph 1, holders of the intellectual property rights referred to in
Article 54 (1) …… shall not be required to introduce an application or to undertake any
particular administrative procedure. Holders of intellectual property rights referred to in
Article 54 (1) shall not be required to have a correspondence address in the United Kingdom
in the 3 years following the end of the transition period”
6.3.2. Para 1 (1) of the new Sched 1A provides that the new “re-registered design”. comes
into being automatically.
6.3.3. Para 1 (1) of the new Sched IB makes similar provision in relation to re-registered
international designs.
6.4.1. Art 54 (3) provides:
“Notwithstanding paragraph 1, if an intellectual property right referred to in that paragraph is
declared invalid or revoked, or, in the case of a Community plant variety right, is declared
null and void or is cancelled, in the Union as the result of an administrative or judicial
procedure which was ongoing on the last day of the transition period, the corresponding right
in the United Kingdom shall also be declared invalid or revoked, or declared null and void, or
be cancelled. The date of effect of the declaration or revocation or cancellation in the United
Kingdom shall be the same as in the Union.
By way of derogation from the first subparagraph, the United Kingdom shall not be obliged to
declare invalid or to revoke the corresponding right in the United Kingdom where the
grounds for the invalidity or revocation of the European Union trade mark or registered
Community design do not apply in the United Kingdom.”
6.4.2. Reg. 21 (c) (ii) of The Intellectual Property (Amendment etc.) (EU Exit) Regulations
2020 inserts a new para 9A into Sched. 1A to the Registered Act 1949:
“Existing registered Community design: effect of invalidity
9A.—(1) This paragraph applies where, on IP completion day, an existing registered
Community design is the subject of proceedings under Article 25 (Grounds for invalidity)
which have been instituted but not finally determined before IP completion day (“invalidation
proceedings”).
(2) Subject to sub-paragraph (4) where—
(a) the existing registered Community design is declared invalid (whether wholly or partly)
pursuant to a decision which is finally determined, and
(b) the registrar has either—
(i) received notice of the situation referred to in paragraph (a) (“an invalidation notice”), or
(ii) otherwise become aware of the situation referred to in paragraph (a),
the registration of the re-registered design which derives from the existing registered
Community design must be declared invalid to the same extent as the existing registered
Community design.
(3) Where (by virtue of sub-paragraph (2)) the registration of a re-registered design is
declared invalid, the registrar must—
15

(a) where there is a partial declaration of invalidity, amend the entry in the register of
designs;
(b) otherwise, remove the re-registered design from the register.
(4) The registration of a re-registered design must not be declared invalid under
sub-paragraph (2) where the grounds on which the existing registered Community design
was declared invalid (whether wholly or partly) would not apply or would not have been
satisfied in relation to the re-registered Community design if—
(a) the re-registered design had been the subject of an entry on the register as at the date
the invalidation proceedings were instituted, and
(b) an application for a declaration of invalidity of the re-registered design based on those
grounds had been made on that date under section 11ZA.
(5) Where the registration of a re-registered design is declared invalid to any extent pursuant
to this paragraph—
(a) it shall to that extent be treated as having been invalid from the date on which the rights
of the proprietor of the existing registered Community design from which it derives are
deemed to have ceased under the Community Design Regulation;
(b) subject to any claim for compensation for damage caused by negligence or lack of good
faith on the part of the proprietor or a claim for restitution based upon the unjust enrichment
of the proprietor, the invalidity of the registration of the re-registered design does not affect—
(i) a decision arising from infringement proceedings which has been finally determined and
which has been enforced prior to the date of the declaration of invalidity made pursuant to
sub-paragraph (2) (“the invalidity declaration date”);
(ii) any contract entered into prior to the invalidity declaration date to the extent that it has
been performed prior to that date, subject to the right of a party to the contract to claim the
repayment of any consideration paid under the contract where, having regard to the
circumstances, it is fair and equitable for such repayment to be made.
(6) Where a declaration is made under subparagraph (2), section 11ZE(2) does not apply.
(7) An invalidation notice may be sent by any person.
(8) For the purposes of this paragraph—
(a) proceedings are instituted if an application or counterclaim for a declaration of invalidity—
(i) has been filed (and not subsequently withdrawn) with the European Union Intellectual
Property Office or a court designated for the purposes of Article 80, and
(ii) meets the requirements for being accorded a filing date under the Community Design
Regulation and Commission Regulation (EC) No 2245/2002 of 21 October 2002;
(b) a decision is finally determined when—
(i) it has been determined; and
(ii) there is no further possibility of the determination being varied or set aside (disregarding
any power to grant permission to appeal out of time).
(9) An appeal lies from a declaration of invalidity under subparagraph (2).”;
6.5 Art 54 (4) of the withdrawal agreement requires that a registered design right which
arises in the United Kingdom in accordance with point art 54 (1) (b) shall have as its first
renewal date the renewal date of the existing registered Community design. This appears to
have been implemented by para 1 (1) of the new Sched. 1A of the Registered Designs Act
1949 in that an existing registered Community design is to be treated on and after exit day
as if an application for its registration had been made, and it had been registered, under the
1949 Act.
6.6.1. Art 54 (6) of the withdrawal agreement stipulates:
“In respect of registered design rights ……. in the United Kingdom referred to in point.. (b)
...of paragraph 1, the following shall apply:
16

(a) the term of protection under the law of the United Kingdom shall be at least equal to the
remaining period of protection under Union law of the corresponding registered Community
design ………….;
(b) the date of filing or or date of priority shall be that of the corresponding registered
Community design ………….”
6.6.2. This stipulation is satisfied by para 1 (4) of the new Sched. 1A:
“For the purposes of this Act—
(a) the date of registration of a re-registered design is the date on which the existing
registered Community design from which the re-registered design derives was treated as
registered under the Community Design Regulation, and
(b) the date of the application of a re-registered design is the date treated, under Article 38,
as the date of filing of the application for the registration of the existing registered
Community design from which the re-registered design derives.”
6.7.1. Art 56 of the withdrawal agreement requires the United Kingdom to take measures to
ensure that natural or legal persons who have obtained protection before the end of the
transition period for internationally registered …... designs designating the Union pursuant to
….. the Hague system for the international deposit of industrial designs, enjoy protection in
the United Kingdom for their trade marks or industrial designs in respect of those
international registrations.
6.7.2. That requirement is implemented by reg 5 and Sched. 3 of The Designs and
International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 as amended by reg
15 of The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020.
6.7.3. Para 2 of Sched. 3 as amended inserts a new s.12B into the Registered Designs Act
1949.
6.7.4. S.12B as amended inserts a new Sched. 1B into the Registered Designs Act 1949
which provides for International designs in respect of which the European Union is
designated to be treated as registered under the Registered Designs Act 1949.
“Where a person has filed an application for …….. a Community design in accordance with
Union law before the end of the transition period and where that application was accorded a
date of filing, that person shall have……. for the same design, the right to file an application
in the United Kingdom within 9 months from the end of the transition period. An application
made pursuant to this Article shall be deemed to have the same filing date and date of
priority as the corresponding application filed in the Union ………..”
6.8.2. Para 12 of Sched. 1A implements art 59 with regard to applications for registered
Community designs.
6.8.2. Para 12 of Sched. 1B makes similar provisions with regard to applications for
international marks designating the EU.
7. Unregistered Community Designs
7.1. Art 11 (1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on
Community designs OJ L 3, 5.1.2002, p. 1–24 (“the Design Regulation”) provides that a
design which could be registered as a registered design shall be protected by an intellectual
17

property right known as an unregistered Community design for a period of three years as
from the date on which the design was first made available to the public within the
Community. Art 19 (2) of the Regulation adds that it confers on its holder the right to prevent
the acts referred to in paragraph if the contested use results from copying the protected
design.
7.2. Art 57 provides:
“The holder of a right in relation to an unregistered Community design which arose before
the end of the transition period in accordance with Regulation (EC) No 6/2002 shall in
relation to that unregistered Community design ipso iure become the holder of an
enforceable intellectual property right in the United Kingdom, under the law of the United
Kingdom, that affords the same level of protection as that provided for in Regulation (EC) No
6/2002. The term of protection of that right under the law of the United Kingdom shall be at
least equal to the remaining period of protection of the corresponding unregistered
Community design under Article 11(1) of that Regulation.”
7.3 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:
● unregistered Community designs that came into force before 31 Dec 2020 to continue for
the remainder of their terms as “continuing unregistered Community designs”; and
● the creation of a new intellectual property right in the UK similar to unregistered
Community design to come into effect at 23:00 on 31 Dec 2020 to be known as
“supplementary unregistered designs.”
7.4. Continuing Unregistered Community Designs
7.4.1. Reg 4 (3) of The Designs and International Trade Marks (Amendment etc.) (EU Exit)
Regulations 2019 provides as follows:
“The Design Regulation and the 2005 Regulations apply to a continuing unregistered
Community design subject to—
(a) as regards the Design Regulation, the modifications set out in Part 1 of Schedule 2; and
(b) as regards the 2005 Regulations, the modifications set out in Part 2 of Schedule 2.”
7.4.2. Part 1 of Sched, 2 of The Designs and International Trade Marks (Amendment etc.)
(EU Exit) Regulations 2019 amends the Community Design Regulation (which has been
incorporated into domestic law by s.3 (1) of the European Union (Withdrawal) Act 2018) to
provide for continuing unregistered Community designs.
7.4.2. Part 2 of Sched, 2 amends The Community Design Regulations 2005.
7.4.4. Reg 19 of The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020
further amends Sched. 2 to substitute 31 Dec 2020 for 29 March 2019.
7.5. Supplementary Unregistered Design
7.5.1. Reg. 3 of The Designs and International Trade Marks (Amendment etc.) (EU Exit)
Regulations 2019 provides for Sched. 1 of that statutory instrument to amend the
Community Design Regulation and the Community Design Regulations 2005 ro establish
supplementary unregistered design right.
18

7.5.2. Part 1 of Sched 1 amends the Community Resign Regulation which is incorporated
into domestic law by s,3 of the European Union (Withdrawal) Act 2018.
7.5.3. Part 2 mends the Community Design Regulations 2005.
7.5.4. Reg 18 of The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020
further amends Part 2 of Sched, 1 by substituting “IP exit day” (31 Dec 2020) for “exit day”
(29 March 2019) in the Community Design Regulations 2005.
8. Geographical Indications
8.1. Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21
November 2012 on quality schemes for agricultural products and foodstuffs
OJ L 343, 14.12.2012, p. 1–29 (“Regulation 1151/2012”) protects the denomination of origin
and preparation of gastronomic specialties across the EU such as Scotch whisky and Parma
ham.
8.2. Art 54 (2) of the withdrawal agreement requires the UK to continue to protect such
specialities:
“Where a geographical indication, designation of origin or traditional speciality guaranteed
within the meaning of Regulation (EU) No 1151/2012 of the European Parliament and of the
Council1, a geographical indication, designation of origin or traditional term for wine within
the meaning of Regulation (EU) No 1308/2013 of the European Parliament and of the
Council2, a geographical indication within the meaning of Regulation (EC) No 110/2008 of
the European Parliament and of the Council or a geographical indication within the meaning
of Regulation (EU) No 251/2014 of the European Parliament and of the Council4, is
protected in the Union on the last day of the transition period by virtue of those Regulations,
those persons who are entitled to use the geographical indication, the designation of origin,
the traditional speciality guaranteed or the traditional term for wine concerned shall be
entitled, as from the end of the transition period, without any re-examination, to use the
geographical indication, the designation of origin, the traditional speciality guaranteed or the
traditional term for wine concerned in the United Kingdom, which shall be granted at least
the same level of protection under the law of the United Kingdom as under the following
provisions of Union law:
(a) points (i), (j) and (k) of Article 4 (1) of Directive (EU) 2015/2436 of the European
Parliament and of the Council1; and
(b) in view of the geographical indication, designation of origin, traditional speciality
guaranteed or traditional term for wine concerned, Article 13, Article 14(1), Article 24, Article
36 (3), Articles 38 and 44 and point (b) of Article 45(1) of Regulation (EU) No 1151/2012;
Article 90(1) of Regulation (EU) No 1306/2013 of the European Parliament and of the
Council2; Article 100 (3), Article 102 (1), Articles 103 and 113, and point (c) (x) of Article
157(1) of Regulation (EU) No 1308/2013; Article 62(3) and (4) of Commission Regulation
(EC) No 607/20093; the first subparagraph of Article 15 (3), Article 16 and Article 23 (1) of
Regulation (EC) No 110/2008 and, insofar as to the extent related to compliance with those
provisions of that Regulation, Article 24 (1) of that Regulation; or Article 19 (1) and Article 20
of Regulation (EU) No 251/2014.”
8.3. HMG has complied with that incorporation by incorporating Regulation 1151/2012 into
its law as modified by The Agricultural Products, Food and Drink (Amendment) (EU Exit)
Regulations 2019 (SI 2019 No 1366).
8.4. Reg. 3 of the regulations amends Regulation 1151/2012.
19

8.5 Sched 1 inserts new provisions into the Regulation.
9. Plant Varieties
9.1. Plant breeders’ rights are exclusive rights to propagate new varieties of plants and
seeds. Until 31 Dec 2020 breeders of new plant varieties had the choice of registering their
varieties with the Plant Variety Rights Office in Cambridge under the Plant Varieties Act
1997 or with the Community Plant Variety Office in Angers under Council Regulation (EC)
No 2100/94 of 27 July 1994 on Community plant variety rights (Community Plant Variety
Regulation).
9.2. Art 54 (1) (c) requires:
“The holder of any of the following intellectual property rights which have been registered or
granted before the end of the transition period shall, without any re-examination, become the
holder of a comparable registered and enforceable intellectual property right in the United
Kingdom under the law of the United Kingdom:
…………………..
(c) the holder of a Community plant variety right granted pursuant to Council Regulation (EC)
No 2100/942 shall become the holder of a plant variety right in the United Kingdom for the
same plant variety.”
9.3. This is implemented by Reg 3 (2) of The Plant Breeders’ Rights (Amendment etc.) (EU
Exit) Regulations 2019 (SI 2019 No 204) provides that on and after 31 Dec 2020 a
Community plant variety right which, immediately before that day, was contained in the
register maintained under art 87 (2) of the Community Plant Variety Regulation is to be
treated as if it were a plant breeders’ right granted in accordance with the Plant Varieties Act
1997 and as if the variety were registered in accordance with regulations under section 18
(1) (c) of that Act.
9.4, Reg. 2 of The Plant Breeders’ Rights (Amendment etc.) (EU Exit) Regulations 2019
(SI 2019 No 204) revoked the Community Plant Variety Regulation that had been
incorporated into domestic law by s.3 (1) of the European Union (Withdrawal) Act 2018.
9.5.1. Art 54 (6) of the withdrawal agreement requires the following rules to apply to plant
variety rights in the United Kingdom referred to art 54 (1) (c):
(a) the term of protection under the law of the United Kingdom shall be at least equal to the
remaining period of protection under Union law of the corresponding Community plant
variety right;
(b) the date of filing or date of priority shall be that of the corresponding registered
Community plant variety right.
9.5.2. Reg 4 of The Plant Breeders’ Rights (Amendment etc.) (EU Exit) Regulations 2019
provides that the right referred to in para 9.3 above begins on 31 Dec 2020 and ends when
the Community plant variety right expires.
10. Database Rights
Art 58 (1) requires database rights to continue in the UK. No legislation is required to fulfil
that commitment. Reg 28 of The Intellectual Property (Copyright and Related Rights)
(Amendment) (EU Exit) Regulations 2019 (SI 2019 No. 605) restricts EEA nationals from
qualifying for database rights in the UK even though art 58 (2) allows British nationals and
undertakings to qualify for database rights in the EU.
11. Supplementary Protection Certificates (“SPC”)
20

11.1 SPC confer upon the owners of plant protection and pharmaceutical patents
monopolies of the active ingredients of their products for up to 5 years (or in the case of a
medicine for treating children 5 ½ years) after the patent’s expiry. Such monopolies are
granted to compensate for the time waiting for regulatory approval. The instruments
conferring such rights are Regulation (EC) No 1610/96 of the European Parliament and of
the Council of 23 July 1996 concerning the creation of a supplementary protection certificate
for plant protection products and Regulation (EC) No 469/2009 of the European Parliament
and of the Council of 6 May 2009 concerning the supplementary protection certificate for
medicinal products (Codified version) (Text with EEA relevance ) OJ L 152, 16.6.2009, p.
1–10.
11.2. Art 60 of the withdrawal agreement requires:
“1. Regulations (EC) No 1610/96 and No 469/2009 of the European Parliament and of the
Council, respectively, shall apply in respect of applications for supplementary protection
certificates for plant protection products and for medicinal products, as well as to
applications for the extension of the duration of such certificates, where such applications
were submitted to an authority in the United Kingdom before the end of the transition period
in cases where the administrative procedure for the grant of the certificate concerned or of
the extension of its duration was ongoing at the end of the transition period.
2. Any certificate granted pursuant to paragraph 1 shall provide for the same level of
protection as that provided for in Regulation (EC) No 1610/96 or Regulation (EC) No
469/2009.”
11.3. Art 60 of the withdrawal agreement will be satisfied automatically because HMG
intends to continue to grant SPCs after the end of the transition period by incorporating
Regulations (EC) No 1610/96 and No 469/2009 with modifications into domestic law.
11.4 S.3 of the European Union (Withdrawal) Act 2018 incorporates Regulations (EC) No
1610/96 and No 469/2009 into domestic law. Part 6 of The Patents (Amendment) (EU Exit)
Regulations 2019 amends Regulation (EC) No 1610/96 and Part 8 amends Regulation No
469/2009. Part 6 of The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020
make further amendments to Regulation 1610/96 and Part 8 to Regulation 469/2009.
12. Exhaustion of Rights
12.1. Exhaustion of rights is a doctrine of EU law that was first developed by the Court of
Justice of the European Union and more recently incorporated into EU intellectual property
legislation. Essentially it restricts the right of an intellectual property owner to enforce his or
her intellectual property rights once an item that is protected by such rights is marketed in
one member state of the EU with his or her consent. Thus a protected product sold under a
licence in France may be taken across the Rhine for resale Germany without the IP owner’s
consent. As the UK is no longer part of the single market the doctrine would cease to apply
to the UK without an additional agreement.
12.2. Art 61 of the withdrawal agreement constitutes such an agreement:
“Intellectual property rights which were exhausted both in the Union and in the United
Kingdom before the end of the transition period under the conditions provided for by Union
law shall remain exhausted both in the Union and in the United Kingdom.”
12.3. Reg 2 of The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019
as amended by reg 6 of The Intellectual Property (Amendment etc.) (EU Exit) Regulations
21

2020 implements art 61 accordingly:
“(1) Anything which—
(a) was, immediately before [IP completion day], an enforceable EU right relating to the
exhaustion of rights of the owner of an intellectual property right under Articles 34 to 36 of
the Treaty on the Functioning of the European Union or Articles 11 to 13 of the Agreement
on the European Economic Area, and
(b) is retained EU law by virtue of section 4 of the European Union (Withdrawal) Act 2018,
has the same effect on and after [IP completion day], despite the United Kingdom not being
a member State, as it had immediately before [IP completion day].
(2) In this regulation ‘enforceable EU right’ has the meaning given by section 2(1) of the
European Communities Act 1972 (as that Act had effect immediately before its repeal by
section 1 of the European Union (Withdrawal) Act 2018).”
13. Changes not necessitated by the Withdrawal Agreement
13.1. The UK’s departure from the EU has necessitated many changes to existing
legislation in such areas as qualification for the subsistence of copyright and related rights,
licensing and exhaustion of rights over and above those that are contained in the withdrawal
agreement. It is not possible to address them all in this already overlong handout. Here are
some of the most important.
13.2. Copyright and Related Rights: Part 2 of The Intellectual Property (Copyright and
Related Rights) (Amendment) (EU Exit) Regulations 2019 makes extensive changes to the
Copyright, Designs and Patents Act 1988. Part 3 amends a number of statutory
instruments. Part 4 amends Council Regulation (EU) 2017/1563.
13.3. Exhaustion of Rights: Part 3 of The Intellectual Property (Exhaustion of Rights) (EU
Exit) Regulations 2019 amends the Registered Designs Act 1949, The Copyright Designs
and Patents Act 1988 and the Trade Marks Act 1994 to omit or change references to the EU
or EEA. Similarly, Part 4 amends the Design Right (Semiconductor Topographies)
Regulations 1989 and the Copyright and Rights in Databases Regulations 1997.
13.4 Geographical Indications: The Agricultural Products, Food and Drink (Amendment)
(EU Exit) Regulations 2019 create a geographical indications scheme for the UK which I
have discussed in Geographical Indications in the UK after 31 Dec 2020 30 Sep 2020 in
NIPC Law and The New Protected Food Names Scheme as it will apply in Wales 26 Oct
2020 NIPC Wales.
13.5 Patents: The Patents (Amendment) (EU Exit) Regulations 2019 make changes to the
law on compulsory licensing as well as SPCs.
13.6 Plant Breeders Rights: The Plant Breeders’ Rights (Amendment etc.) (EU Exit)
Regulations 2019 make a number of consequential amendments to the Plant Varieties Act
1997 and the regulations made under the Act. The Patents (Amendment) (EU Exit)
Regulations 2019 make changes to The Patents and Plant Variety Rights (Compulsory
Licensing) Regulations 2002.
13.7. Trade Marks: The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 make a
number of consequential amendments to the Trade Marks Act 1994. Reg 2 of The
Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2019 inserts a
22

new subparagraph (1A) intgo para 7 of Sched. 5 of The Trade Marks (Amendment etc.) (EU
Exit) Regulations 2019,
13.8. Unregistered Design Rights: Para 11 of Sched. 8 to The Trade Marks (Amendment
etc.) (EU Exit) Regulations 2019 removes EU member states from the list of qualifying
countries.
14. Trade and Cooperation Agreement
14.1. Title V of Part Two of the EU-UK Trade and Cooperation Agreement contains 57
articles on intellectual property which I discussed in The IP Provisions of the EU-UK Trade
and Cooperation Agreement 30 Dec 2020 in NIPC Brexit. Nothing in the agreement is likely
to require legislation. The European Union (Future Relationship) Act 2020 did not even
mention intellectual property.
14.2. Title V covers the following matters:
Chapter 1 (arts IP1 to IP6) general provisions
● Chapter 2 (arts IP7 to IP37) standards concerning intellectual property rights
○ 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
● Chapter 3 (arts IP38 to IP54) enforcement of intellectual property rights
○ 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
● Chapter 4 (arts IP55 to IP57) other provisions.
14.3. The objectives of the agreement in relation to IP are to:
“(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."
15. Likely Changes to IP Law
15.1. In the short term, change is unlikely because:
● The UK will remain a party to the European Patent Convention, the Agreement
establishing the World Trade Organization including Annex 1C (“TRIPS”), the WIPO
and the main intellectual property treaties and conventions;
● The domestic laws of the UK as at the 31 Dec 2020 were in alignment with those of
the remaining EU member states;
● Many EU regulations have been incorporated into domestic law;
● The UK’s courts are bound by decisions of the Court of Justice and General Court up
to 31 Dec 2020 unless and until they are changed by legislation or a decision of the
Supreme Court; and
● Decisions of the Court of Justice, General Court, Boards of Appeal at the EU IPO
and the courts of other member states will remain of high persuasive authority.
23

15.2. Change could come in the longer term as a result of:
● Changes in EU legislation which the UK may not follow;
● Bilateral and multilateral free trade and economic cooperation agreements with
trading partners outside Europe; and
● Periodic reviews of IP legislation by government and stakeholders.
15.3. Any such changes will be monitored in NIPC Brexit. 3
3
http://nipcexit.blogspot.com/
24

IP After Brexit

More Related Content

What's hot (18)

Similar to IP After Brexit (20)

More from Jane Lambert (20)

Recently uploaded (20)

IP After Brexit