The post below was first published on our Arbitration blog

On 12 September 2017, the People’s Republic of China (PRC) signed the Hague Convention on Choice of Court Agreements (Convention).  The Convention, in force since 1 October 2015, seeks to provide certainty in cross-border litigation by allowing parties to choose the exclusive court in which any disputes arising under a commercial agreement will be resolved.  Courts of member states must accordingly respect exclusive jurisdiction clauses in commercial agreements by staying proceedings in favour of the courts of other member states. They must also recognise and enforce judgments of the courts of other member states, subject to certain limited exceptions.

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EU and UK release joint technical note comparing their positions on citizens’ rights

Following the fourth round of negotiations, the latest joint technical note comparing EU and UK positions on citizens’ rights has been released. There has been agreement on a number of issues regarding citizens’ rights, however, there are a number of areas where the EU and the UK still hold differing views.

The European Council meeting on 19 – 20 October 2017 will decide whether there has been sufficient progress on the first phase of the Article 50 negotiations on withdrawal arrangements in order to progress to the second phase in the negotiations and consider the UK’s future relationship with the EU.  Speaking at a press conference following the latest round of negotiations, Michel Barnier recognised that the Prime Minister’s speech in Florence last week had certainly created a new dynamic, but he also made it clear that both sides were “not there yet” and that it may be weeks or months before the EU will allow the negotiations to progress to trade talks.

“PORT CHARLOTTE” Whisky does not infringe the EU protected designation of origin (PDO) “PORTO” or “PORT” – Consideration needed urgently for protection of PDOs and GIs, UK and EU-wide, post-Brexit

The post below was first published on our Intellectual Property blog

The CJEU has confirmed that “Port Charlotte”, registered as an EU trade mark for whisky, does not evoke (infringe) the protected designation of origin (PDO) for “porto” or “port”. The decision will be significant for consumer products businesses as it confirms that EU (not national) law applies to enforcement of Protected Designations of Origin (PDO) and highlights the importance of ensuring continued protection of UK PDOs post-Brexit.

Interestingly, the CJEU did not find that the use of “Port Charlotte” as a brand for whisky would have a detrimental impact upon the PDO for port (and the port producers protected by this designation). Yet we await the outcome in a not dissimiliar dispute before the CJEU between the Champagne wine producers and Aldi over the sale of champagne flavoured sorbet (see our report of the Aldi case here ).

Business Impact

·         The CJEU’s ruling that Regulation1234/2007 (which sets out the rules on PDOs for wine) (the “Regulation”) exclusively and exhaustively lays down the legal rules in the EU applicable to the protection of PDOs, to the exclusion of any national laws which seek to provide additional protection, confirms that the system for PDO protection is entirely as set out in the relevant EU law, and cannot be supplemented at a national level.

·         Assessing consumer perception of the meaning of a mark, throughout the EU, will be relevant to the assessment of whether that mark “evokes” in the mind of the consumer the PDO in question.  The impact of this point will be fact specific, in each case.  The likelihood that a PDO is evoked may also be affected by the similarity, or otherwise, of the features of the products in question.

·         In a post-Brexit world, the UK will need to give thought to the interaction of PDOs granted under the EU system and what level of protection would be offered going forwards to existing PDOs in the UK and whether the UK continues with its own system of protected designations and geographical indications for distinctive UK foods (such as cheeses and pork pies) and beers/wines (such as ales and bitters).

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UK Government’s Future Partnership Paper on Foreign policy, defence and development: including proposals for co-operation on sanctions, cyber security, and the defence and security industries

The UK Government has released a Paper outlining the UK’s proposals for a future partnership with the EU regarding foreign policy, defence and development. The Paper highlights the UK’s shared interests and values with the EU regarding foreign policy and defence, and the UK Government’s offer and intention to work closely with the EU in the future in a partnership “unprecedented in its breadth”, and that is deeper than any other third country relationship. The Paper offers a number of insights into the practical ways in which the UK envisages that such cooperation will be achieved after Brexit, including in relation to sanctions, cyber security, defence and security, development and broader foreign policy. Continue reading

Security, law enforcement and criminal justice partnership paper released by UK Government

Earlier today the UK Government released a Future partnership paper on Security, law enforcement and criminal justice. This paper is closely related to the Foreign Policy, Defence and Security and Development paper released by the UK Government on 12 September. The UK Government’s paper notes the importance for UK and EU citizens of a continued cooperation on matters such as security, law enforcement and criminal justice and proposes a future partnership that goes much further than the existing, often ad hoc arrangements the EU currently operates with third countries. The UK Government suggests that this future partnership agreement could draw on legal models currently used by the EU to structure cooperation with non-EU countries in other fields, such as trade.

Exhaustion, economic links and “unitary control” – the AG’s opinion in the Schweppes trade mark reference

The post below was first published on our Intellectual Property blog

Trade mark rights may still be exhausted even if goods are imported bearing identical trade marks (having been applied in another EU Member State (MS) by a separate entity) where, given the economic links between the trade mark holder and the entity applying the trade mark in the exporting MS, it is clear that the marks are under “unitary control” and that the proprietor of the mark in the importing MS has the possibility of determining directly or indirectly the goods to which the trade mark in the exporting State may be affixed and of controlling their quality.

This was the Opinion of Advocate General Mengozzi (delivered on 12 September 2017), in Case C291/16 Schweppes SA v Red Paralela SL, referred to the CJEU by the Commercial Court of Barcelona. Schweppes SA, the Spanish subsidiary of the Orangina Schweppes Group, opposed the importation into and/or marketing in Spain (where it owns the trade mark SCHWEPPES) of Schweppes branded tonic water which had come from the United Kingdom, where that mark had been applied by and is owned by Coca-Cola.

Exhaustion of rights is an area mentioned as requiring immediate consideration in the recent Commission paper on the future of IPRs in Europe post-Brexit (see our blog posting on this here).  Once outside the EU the EU-wide exhaustion rules would not apply to marks applied in the UK, but it is possible that the UK courts might consider applying international exhaustion principles in their place, barring any other provision on exhaustion enacted by the UK Government in advance of the UK’s withdrawal from the EU.


Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217

UK future partnership paper on foreign policy, defence and development released

The UK Government has released a paper outlining the UK’s proposals for a future partnership with the EU regarding foreign policy, defence and development. The paper highlights the UK’s shared interests and values with Europe regarding foreign policy and defence, and the UK Government’s ongoing intention to working closely with the EU in the future, going beyond the types of agreements that exist between the EU and non-EU countries. The Government is offering to contribute military assets to EU operations, cooperate on sanctions and agree joint positions on foreign policy as part of its partnership with the EU after Brexit.

Commission paper on IPR post-Brexit highlights the importance of resolving key issues prior to withdrawal

The European Commission has published “Position paper transmitted to EU27 on Intellectual property rights (including geographical indications)” (7 September 2017) which proposes that the (Brexit) Withdrawal Agreement should ensure that:

  • The protection enjoyed in the United Kingdom on the basis of Union law by both UK and EU 27 (the remaining EU states) holders of intellectual property rights having unitary character within the Union before the withdrawal date is not undermined by the withdrawal of the United Kingdom from the European Union. The paper suggests there should be automatic recognition of an IP right in the UK on the basis of the existing, unitary character IP right i.e. that, for example, any EU trade mark rights applying in the UK prior to Brexit should be automatically replaced by UK rights post-Brexit. Further, the fact that use may not be in the UK should not be able to form a basis for revocation of the rights. The implementation should be not result in any financial cost for the IPR holders and any administrative burden should be kept to a minimum.  The paper also requires that the UK Government put in place a system to continue the protection of Geographical Indications (GIs) and protected designations of origin (PDOs) which are currently legislated for under EU law and for which there is no current domestic legislation in the UK. However there is no suggestion of a reciprocal recognition of UK-based PDOs or GIs post-Brexit.
  • Procedure-related rights (e.g. right of priority) in relation to an application for an intellectual property right having unitary character within the Union still pending on the withdrawal date are not lost when applying for an equivalent intellectual property right in the United Kingdom ie. that where an application is in progress at the point of the UK’s withdrawal from the EU, the applicant should be entitled to keep the benefit of any priority date when applying after the withdrawal date for an equivalent IPR in the UK.
  • Applications for supplementary protection certificates or for the extension of their duration in the United Kingdom on-going before the withdrawal date are completed in accordance with the conditions set out in Union law (and any certificate so granted or extended should provide for protection equivalent to that provided for by Union law.
  • Databases protected in the EU27 and the UK before the withdrawal date continue to enjoy protection after that date. This involves waiving the requirements of Article 11(1) and (2) in the EU27 Member States in respect of UK nationals and UK companies and firms; and the UK should not exclude EU27 nationals and EU27 companies and firms from legal protection of databases in the UK on nationality or establishment grounds. No provision for any continuing mutual recognition of database rights is referred to however.
  • Exhaustion before the withdrawal date within the Union of the rights conferred by intellectual property rights is not affected by the withdrawal of the United Kingdom from the European Union. The conditions for exhaustion of each IPR should be those defined by Union law.

These points highlight the key areas that have concerned IP stakeholders since the Brexit referendum and serve as a timely reminder to the UK Government that these issues need to be dealt with prior to Brexit, in one way or another.

Joel Smith, Head of IP at Herbert Smith Freehills, commented, “Whilst it is reassuring that the Commission recognises that there are important issues for continuity of IP protection to be addressed upon Brexit, this paper only begins to scratch the surface for the number of issues that need examining by UK Government”.