2021 · Brexit · European Union · Intellectual Property · International Intellectual Property Law · TRIPS Agreement · United Kingdom

Intellectual Property in the EU-UK (Brexit) Trade and Cooperation Agreement

Happy new year to you, dear reader.

So, I have had the chance to quickly look through the intellectual property provisions of the EU-UK Trade & Cooperation Agreement (TCA). I read the version of the TCA that is available on the UK government’s website here dated 24 December 2020. The analysis below is based on a cursory overview of some of the IP provisions contained in the text. The analysis here is not exhaustive as I am just highlighting some of the provisions that jumped out to me when I read the text. The IP provisions of the TCA can be found in Title V, Heading One, of Part Two of the Agreement and it covers different types of IP rights ranging from copyright to trade secrets. There are 57 Articles in all and only five of them are highlighted below.

Firstly, with regard to scope, paragraph 1 of Article IP.2 of the TCA clarifies that the IP provisions of the TCA will “complement and further specify the rights and obligations of each party under the TRIPS Agreement” and other IP treaties to which they are parties. This suggests to me that all the flexibilities currently available to the UK under the various IP treaties to which the UK is a party remain intact, unless they have been expressly curtailed by the TCA or other agreements.

Secondly, in relation to the exhaustion of intellectual property rights, Article IP.5 of the TCA effectively grants the UK the freedom to determine its own rules in this regard. It provides that “[t]his Title does not affect the freedom of the parties to determine whether and under what conditions the exhaustion of intellectual property rights applies.” Given that the UK was previously subject to the EU’s approach to exhaustion (i.e. regional exhaustion) and considering the geographical proximity of the UK to the EU, it will be interesting to see how this area of the law develops in the UK in the coming years.

Thirdly, concerning limitations and exceptions to copyright, Article IP.15 of the TCA incorporates the (in)famous three-step test that can also be found in Article 13 of the TRIPS Agreement. Article IP.15 requires limitations or exceptions to be confined to “certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the right holders.” This three-step test applies to the rights of authors (Article IP.7), performers (Article IP.8), producers of phonograms (Article IP.9), and broadcasting organisations (Article IP.10). The test also applies to broadcasting and communication to the public of phonograms published for commercial purposes (Article IP.11). Arguably, the three-step test in the TCA does not affect the mandatory exception for quotations found in Article 10(1) of the Berne Convention. I hold the view (as some other scholars) that Article 10(1) of the Berne Convention is not subject to the three-step test in both the Berne Convention and the TRIPS Agreement. In the same vein, I do not think that Article IP.15 of the TCA should apply to this quotation exception in the Berne Convention. As noted above, the TCA complements the rights and obligations of the parties under existing IP treaties. This may be of importance with regard to future revisions of the fair dealing exception in UK copyright law.

Fourthly, Article IP.32 deals with patents and public health and it provides in paragraph 1 that: “The Parties recognise the importance of the Declaration on the TRIPS Agreement and Public Health, adopted on 14 November 2001 by the Ministerial Conference of the WTO at Doha (the “Doha Declaration”). In interpreting and implementing the rights and obligations under this Section, each Party shall ensure consistency with the Doha Declaration.” Paragraph 2 of Article IP.32 further provides that: “Each Party shall implement Article 31bis of the TRIPS Agreement, as well as the Annex to the TRIPS Agreement and the Appendix to the Annex to the TRIPS Agreement.” Interestingly, unlike copyright (Article IP.15), trademarks (Article IP.23), and designs (Article IP.30), there is no specific provision regarding exceptions to patent rights in the TCA. This implies that the right of the UK to use the flexibilities currently contained in both the Paris Convention and the TRIPS Agreement is not disturbed by the TCA. Moreover, Article IP.32 confirms the freedom of the parties to implement exceptions to patent rights for the protection of public health.

Fifthly, in relation to geographical indications, Article IP.57 of the TCA provides that: “Noting the relevant provisions of any earlier bilateral agreement between the United Kingdom of the one part and the European Union and European Atomic Energy Community of the other part, the Parties may jointly use reasonable endeavours to agree rules for the protection and effective domestic enforcement of their geographical indications.” This provision perhaps reflects the inability of the parties to reach an agreement on the issue of the protection of geographical indications. As indicated by the underlined word, the use of “reasonable endeavours to agree rules” in this regard is not mandatory. Bearing in mind the fact that the TRIPS Agreement gives WTO Members the freedom to adopt any legal means (i.e. sui generis laws, trademark law, or unfair competition law (or a combination of any of them)) to protect geographical indications, this means that the UK is free to choose not to follow the EU’s preferred approach i.e. sui generis laws. This also arguably gives the UK some flexibility in its trade negotiations with the USA. Unlike the EU, the USA prefers to use trademark law to protect geographical indications. This is again another area to watch in terms of future developments.

As I noted earlier, this is not an exhaustive analysis of the IP provisions in the TCA. I may be able to write about the other IP provisions in the coming weeks or months. As this blog is focused on international intellectual property law, I should stress that the commentary here is limited to the IP provisions in the TCA. I am not expressing any views with regard to the other parts of the TCA. Once again, happy new year!


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