The Japan-EU Economic Partnership Agreement, the largest free-trade agreement between Japan and the EU (aka Japan-EU Free Trade Agreement or JEFTA) entered into force on 1 February.
JEFTA eliminates most custom duties and trade barriers between Japan and the EU and sets out rules enhancing mutual intellectual property protection and recognition.
JEFTA will not apply to the UK if there is a no-deal Brexit, as the UK is not an independent party to the agreement, only as part of the EU.
IP rights which are designated as applying across the EU (EU trade marks, Community plant variety rights, Community registered designs and Community unregistered designs) and those, qualification for which involves activity within the EU (such as database rights), are all at risk of termination in relation to the territory of the UK once the definition ‘EU’ no longer includes the UK. However, the Commission and the UK Government have agreed at negotiator level (as published on 19 March 2018 and subsequently, 19 June 2018) certain sections in the withdrawal agreement including provision of replacement rights for those registered rights thus affected and for the UK Government to provide replacement rights for UK registered rights.
The UK Government’s White Paper detailing its proposal for the future relationship between the UK and the EU (published on 12 July 2018) includes a limited number of proposals relating to intellectual property as follows:
• The UK intends to explore staying in the Unified Patent Court (UPC) and Unitary Patent system post-Brexit. The UK will work with the member states that have signed up to the UPC Agreement to ensure that the UPC Agreement can continue on a firm legal basis;
• Arrangements on future co-operation on intellectual property are recognised as important to provide confidence and security to rights holders operating in and between the UK and the EU;
• The UK will establish its own Geographical Indications (GIs) scheme to provide continuous protection for UK GIs in the UK and protection for new GIs applied for by UK and non-UK applicants
In our detailed briefing, we review the proposals for the treatment and protection of intellectual property rights in the UK at Brexit: see Intellectual Property and Brexit (part of the HSF Brexit Legal Guide 2018).
See also the Herbert Smith Freehills Brexit Hub and Brexit 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 ).
· 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).