As the finale of the Brexit saga draws near it is high time for IP rights holders to make sure that they will not be caught out by the proposed changes to the various IP regimes.
Patents are unaffected and the position as regards EU trade marks (EUTMs) and Community registered designs (CRDs) is relatively clear in that comparable UK rights will be automatically created out of existing EUTMs and CRDs at no cost to the rights holder. So far so good then – but what about Geographical Indications (GIs) which are perhaps not at the forefront of people’s minds and might be in danger of being overlooked?
The UK Government’s plan for GIs is to create, at the end of any transition period or in the event of a no deal, an independent UK GI scheme which mirrors the EU GI’s four registers for i) food, drink and agricultural products (including beer, cider and perry), ii) spirit drinks, iii) wine and iv) aromatised wine.
Crucially, all of the 88 EU GIs which are registered in respect of a UK product would be given automatic protection under the new UK regime but no such automatic right will be created for any of the other EU GIs.
This, of course, means that the holders of EU GIs for any non-UK products such as cheese, wine and olive oil would need to re-apply for protection in the UK to ensure that their rights continue to be protected.
Following the UK’s exit from the EU there will be a 9 month transition period during which EU GI holders covering non-UK products can re-apply for a UK GI under the new scheme. The details of such a UK application would be the same as for the current registered EU GI but the application might face substantive examination before maturing to registration – so eventual protection in the UK is not guaranteed even for holders of existing registered EU GIs (details of the scheme have not yet been published).
The position as regards the continued enforceability in the EU r27 of the 88 EU GIs which are registered in respect of a UK product is not yet fully clear. The most likely outcome at present is that these rights will continue in force and that no re-application will be needed. The UK Government has committed to assisting rights holders with any re-application should that in fact become necessary.
The key message, therefore, is that holders of EU GIs covering non-UK products should make sure that they re-apply for corresponding UK GIs during the post-Brexit 9 month window to ensure that their rights are protected.
By Andy Clemson