The deal is focused on trade in goods and related issues however it does include provisions on IP, which set out the agreed minimum standards on protection and enforcement. In general, these minimum standards flow from the various IP-related international treaties, which the EU and the UK are already party to, such as the TRIPS Agreement, membership of which is not affected by the UK’s withdrawal from the EU.
These minimum standards already unpin the UK’s intellectual property framework, so what has been agreed in the deal will not in itself have a significant impact on the current framework. Changes have instead been driven by the 2019 Withdrawal Agreement, already agreed with the EU prior to the UK leaving the EU on 31 January 2020, in which the UK agreed to continued recognition of existing unitary rights (EU trade marks and community designs) by creating equivalent protection under UK law. The UK’s no-deal planning Statutory Instruments (SI’s) on intellectual property, which were enacted to prepare UK law for a no-deal Brexit also came into force from 1 January 2021. For more detail on the changes that came into force on 1 January 2021 in relation to trade marks and designs see our earlier articles: 5 key changes to your EU trade marks to look out for on 1 Jan 2021 and Beyond Brexit: impact of IP.
Of particular interest in relation to the deal however are some of the areas where the UK has sought to explicitly remain free to diverge from the EU going forward. For example, in the areas of copyright and designs, exhaustion of intellectual property rights and geographical indications. Further, nothing has been agreed on jurisdiction and enforcement (the UK is requesting to be allowed to accede to the Lugano Convention – to get back to the pre-Brexit position - but nothing has been agreed yet).
Exhaustion:
The EU has not agreed to continue a reciprocal exhaustion of intellectual property rights regime with the UK. The deal states that the UK and the EU have agreed that both parties are free to determine what exhaustion regime should apply to their territories (Article IP:5). This means the UK’s no-deal planning on exhaustion (the Exhaustion SI) has come into effect as of 1 January 2021. The Exhaustion SI implements a modified version of the pre-Brexit regional exhaustion regime. It ensures that once a product has been legitimately placed on the market in the EEA, that product can continue to be re-sold into the UK, without being prevented by the rightsholder. However, the EU may allow rightsholders to restrict the importation of certain goods from the UK into the EEA that have not previously been put on sale in the EEA. In effect, this leaves the UK with a one-way exhaustion regime. However, the purpose of the Exhaustion SI is to ensure continuity, to the extent possible, post-Brexit and the government has said it is considering all options for a future regime. We expect the UK government to run a consultation on a future regime in the early part of this year. One of the options for the future UK regime is the pre-EU joining position of international exhaustion. Therefore businesses and trade bodies with an interest in parallel trade should be prepared to lobby the UK government to influence the government’s approach to the future regime. For more on exhaustion see our earlier article: No deal Brexit and exhaustion.
Copyright and designs:
The deal includes the minimum requirements for term of protection for copyright works as set out in the international conventions on copyright and does not change the general principle of life plus 70 years for authors’ works. However, the deal explicitly leaves both parties free to provide for specific rules on the term of protection for musical compositions with words (i.e. songs where the music and lyrics have been created in order to be used together), works of joint authorship and cinematographic and audiovisual works (e.g. films and tv programmes) (Article IP12.2). Based on the earlier UK and EU drafts of the deal, the UK may be intending to diverge from the EU on term of protection for films, TV programmes and songs, which would mean copyright in the same work could expire at different times in the EU and UK. See our earlier article on the UK’s negotiating position on copyright.
The UK and the EU have also agreed that designs (including unregistered designs), shall also be eligible for copyright protection in the territories of each Party. This does not change the current position in the UK. However, the deal states that the extent to which and the conditions under which, including the level of originality required for copyright protection, shall be determined by each Party. The UK is therefore now free to diverge from the EU on the framework for copyright protection for designs. We could therefore see the same design protected for a different length of time in the EU 27 than in the UK.
For more detail on the changes that came into force on 1 January 2021 in relation to copyright, see our earlier articles: No deal Brexit and copyright - broadcasting and online content services and No deal Brexit and copyright - orphan works.
Geographical Indications (GIs):
The deal says the EU and the UK will use reasonable endeavours to agree rules for protection and enforcement of their own protected GIs. The UK has set up its own GI scheme, which came into force on 1 January 2021, and mirrors the existing requirements and designations for GIs protected under the EU scheme. This means from 1 January 2021, all new and pending GI applications under the EU scheme will not have effect in the UK and a separate application will need to be made under the UK GI scheme.
