Impact of Brexit on proceedings involving EU-wide intellectual property rights

By Louise Vaziri Zanjani, Ewan Grist, Louise Vaziri

01-2020

The UK exited the EU on 31st January 2020.  By virtue of the transition period in the Withdrawal Agreement, EU law will continue to apply in and in relation to the UK only until the 31st December 2020.  The EU Treaties, EU free movement rights and the general principles of EU law will then cease to apply in relation to the UK, and prior EU regulations will only continue to apply in domestic law (by virtue of the European Union (Withdrawal) Act 2018) insofar as they are not modified or revoked by regulations under that 2018 Act.

This guidance note looks at the effect of Brexit in relation to enforcement proceedings concerning European Union Trade Mark ("EUTMs") and Community Designs ("CDs").

1. What will happen to ongoing EUTM/CD infringement proceedings pending before the UK courts during the transition period (i.e. up until 31 December 2020)?

Up until the end of the transition period, EU law will continue to apply in and in relation to the UK. The High Court and IPEC will retain their status as an EUTM court and as a Community design court throughout this period, and can still (if appropriate) (i) invalidate/revoke EUTMS/CDs; and (ii) award pan-EU relief for infringement (e.g. a pan-EU injunction). Therefore, throughout the transition period, nothing is expected to change, and that is so whether the proceedings were commenced before the UK court prior to the transition period but have continued into it, or even for proceedings which are commenced during the transition period.

2. What will happen to ongoing EUTM/CD infringement proceedings pending before the UK courts at the end of the transition period (i.e. at 31 December 2020)?

At the end of the transition period (31 December 2020, unless extended), EU law will cease to apply in the UK and the UK court will immediately cease to be an EUTM court or a Community design court. At that point, the UK court can no longer invalidate/revoke EUTMS/CDs or award pan-EU relief for infringement. (For this reason, it may be preferable for one of the parties involved in any currently ongoing EUTM/CD infringement proceedings pending before the UK court to have those proceedings resolved (i.e. judgment handed down and final order made) before 31 December 2020.

For EUTM/CD infringement proceedings pending before the UK court at the end of the transition period, the proceedings will continue on the basis of the newly created UK equivalent rights derived from the EUTM/CD. 

The UK court will be able to grant injunctive relief in respect of, or revoke/invalidate, only the equivalent UK right. However, if the EUTM or registered CD were declared invalid or revoked in EUIPO proceedings that were pending at the end of the transition period, then that will also serve to invalidate/revoke the equivalent UK right (unless the specific ground for invalidity or revocation did not apply in the UK). 

3. Will UK courts continue to uphold pan-EU injunctions granted before Brexit by the courts of EU member states?

During the transition period, the UK remains subject to EU law and hence any pan-EU injunctions granted by the courts of an EU member state will continue to apply in the UK.

As to what happens after the end of the transition period, the UK government has confirmed that any pan-EU injunction issued by the court of a member state before exit day will be recognised by the UK: where the injunction prohibits actions in the UK which would infringe an existing EUTM or RCD had it still been in force in the UK, that injunction will be treated as if it also applied to the derived equivalent UK right. 

It is expected that existing injunctions will remain in effect in the UK for so long as any “re-registered” EU-wide right is valid and in effect in the UK (the legislation  specifically refers to the re-registered right). That said, the legislation qualifies the position by stating that it is "subject to any order of the court to the contrary". This means that existing injunctions could be subject to challenge, for example, if there are reasons why a UK court would not have found infringement in the UK. Further the legislation does not state whether a UK court will be able to uphold on appeal, after the transition period, a pan-EU injunction granted by a UK court at first instance before Brexit. 

4. Will the courts of EU member states continue uphold pan-EU injunctions granted before Brexit by the UK courts?

There has been no indication from the EU that a pan-EU injunction granted by a UK court before Brexit will be recognised and enforced by the courts of EU member states after Brexit, despite the UK's commitment to do so in respect of pan-EU injunctions granted before Brexit by the courts of EU member states. It is quite possible that EU member states will not be required or permitted to enforce a pan-EU injunction granted by a UK court before Brexit, which would be a further example of the asymmetry in the post-Brexit relations between the UK and the EU.