Trade Marks (Amendment etc.) (EU Exit) Regulations 2018

Lord Henley Excerpts

Monday 14th January 2019 Grand Committee

Moved by

[Lord Henley]

That the Grand Committee do consider the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2018, the Patents (Amendment) (EU Exit) Regulations 2018 and the Trade Marks (Amendment etc.) (EU Exit) Regulations 2018.

[The Parliamentary Under-Secretary of State, Department for Business, Energy and Industrial Strategy (Lord Henley) (Con)]

My Lords, intellectual property plays a vital role in the UK’s knowledge economy, and this will continue to be the case after our departure from the European Union. Ensuring strong and balanced IP protection and enforcement is central to the Government’s aim of encouraging businesses to innovate and develop new ideas and technologies, which forms part of the industrial strategy. As I said in the debates on earlier regulations, our intellectual property system is consistently rated as one of the best in the world. These regulations are part of the work being delivered by the Intellectual Property Office to ensure that the system governing intellectual property rights in the UK continues to function in the event of no deal being agreed when we leave the EU in March. This is essential to ensure a smooth transition for business and to provide maximum certainty and clarity.

It is possible to obtain trade mark protection in the UK under the domestic regime and in the European Union under the European Union trade mark regulation. The majority of UK and EU trademark law is harmonised. Much of our domestic legislation derives from EU directives, which were implemented through the Trade Marks Act 1994. The EU trade mark regulation offers the possibility of retaining EU-wide trademark protection in the form of a single registration at the EU Intellectual Property Office. This system runs in parallel to our domestic system, so prior to exit, protection in the UK may be obtained by registration under both the EU and UK systems. After exit, protection in the United Kingdom for trademarks registered under the EU regulation will be lost. The draft instrument before the Committee today uses the powers provided by the withdrawal Act to address deficiencies in the UK trademark law which would arise from exit. EU directives providing for harmonisation of national law relating to domestic trademarks are also aligned in many respects with the EU regulations providing for EU-wide trademarks.

I shall focus in particular on how the Government are ensuring the continued protection of EU trademark rights in the UK on exit. Noble Lords may recall that the EU Intellectual Property Office was established in 1994 as the Office for Harmonisation in the Internal Market before being renamed in 2016. Its goal is to help further harmonise EU trademark law and provide an EU-wide trademark right. Around 1.3 million EU-registered trademark rights are at present in force. These EU trademark rights have protection in the UK. Indeed, many products and services in this country will bear the names of registered EU trademarks and are owned by UK companies. If we do not act, the protections afforded to those rights will be lost. Many of those in this Room will be familiar with the brands which use these types of trademarks, from food and drink retailers to global clothing firms, luxury car manufacturers and everything in between.

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[Lord Adonis (Lab)]

My Lords—

[Lord Henley]

My Lords, I am going to complete this sentence and then I will give way to the noble Lord.

The instrument ensures that replacement domestic rights will be provided to those who own EU trademarks on exit day. It gives certainty and confidence to businesses who rely on their trademark rights in the UK. I will now give way to the noble Lord.

[Lord Adonis]

I am grateful to the Minister. He referred to the fees for filing applications, the very large number that will be pending and those which will need to be converted. An issue of real concern that has been raised by those who have looked at the regulations is what those fees will be and whether the fees for filing converted applications will be the same as the normal trademark application fees. Can he tell the Grand Committee what the position will be in terms of the fees that will be charged?

[Lord Henley]

My Lords, again, I was going to deal with that at the end. There will in fact be no costs to business associated with our creation of new UK rights. However, because the UK comparable right will be independent of the EU trademark, there will be a charge for businesses in relation to future renewal. Businesses that wish to maintain their protection in the UK will need to renew their UK-comparable trademark at an average cost of some £300 for a registration period of 10 years. Applications for EU trademarks that are pending but not yet registered at exit day will need to be examined under UK law. The normal UK fee, whatever that is, will therefore apply to those applications. We have committed to respect the relevant filing dates for those applications under this instrument.

[Baroness Crawley (Lab)]

My Lords, on future renewal fees, what are we talking about when we refer to the future? Is it beyond the transition period or within it? How are we defining “the future”?

[Lord Henley]

My Lords, if the noble Baroness will be patient, the trademark is renewed every 10 years. When it is renewed, a fee will be paid. That does not change.

The instrument provides that these new UK rights will be fully independent UK trademarks which can be challenged, assigned, licensed or renewed separately from the original EU trademark. Such new UK trademarks will, however, retain their original EU filing date and therefore any other relevant dates that were filed as part of the original application.

Finally, there are miscellaneous amendments to the Trade Marks Act 1994 and the Trade Marks Rules 2008 to reflect the fact that the UK will no longer be a member state or a member of the European Economic Area.

In conclusion, these regulations are a small but vital part of ensuring that this part of the intellectual property system continues to function if the no-deal outcome arises. I hope that on this occasion, noble Lords will support the draft regulations. I commend them to the Committee.

[Lord Adonis]

Before the noble Lord sits down —

[Lord Henley]

I have sat down.

[Lord Adonis]

He has not sat down, in the sense that he is perfectly capable of answering a question before he concludes his remarks.

He again has not dealt with the question of consultation, which as he knows is of huge concern to the Grand Committee. We would be grateful if, before we come to our debate, he could set out what consultation has taken place, so that we can discuss whether we think that consultation has been adequate.

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I have two further issues, one of which was mentioned by the noble Baroness, Lady Bowles, which is that there are some complicated transition arrangements outlined in the Explanatory Memorandum. Paragraphs 7.10, 7.11 and 7.12 make reference to some of the problems that will occur with court cases being considered at the time of exit. The different EUTMR regulations and the proceedings and rules for that do not sit well with the existing arrangements in the UK. I do not think it needs a detailed response today, but I would be grateful for a note on that when the Minister comes to consider whether he might write to us. As for the continuing role of the ECJ on such determinations—particularly when cases have to be raised in two territories, as noted by the noble Lord, Lord Clement-Jones—how are these going to be resolved? Have they any plans for how that might happen in practice? I look forward to hearing his response.

[Lord Henley]

My Lords, I will try to be brief and as always I will offer to write to all appropriate noble Lords. I think the noble Lord, Lord Adonis, knows what I mean by appropriate.

[Lord Adonis]

And trusted.

[Lord Henley]

Appropriate. The noble Lord will be aware that I trust all noble Lords implicitly and explicitly.

On consultation, I again make clear that the IPO has been engaging with businesses on the implications of exit, and in particular on trademarks, since the referendum result. It has also consulted with specific stakeholders on the technical detail of this instrument. It prefers to fully consult whenever possible but, due to the unique nature of EU exit and sensitivities around negotiations at the time of drafting, we felt the best course on this occasion was to limit consultation.

The noble Lord, Lord Clement-Jones, asked what happens if there is a deal and what the point of the regulations are. I repeat that the regulations will only come into force in the event of no deal. If we secure a deal with the EU, the provisions on intellectual property in the withdrawal agreement will come into effect, and that means EU trademarks will continue to have effect in the UK at least until the end of the transitional period. During the transitional period, it is likely that revised regulations will be drafted which will take into account the result of further negotiations reflecting the future economic partnership.

I will touch on possible costs. The noble Lord, Lord Clement-Jones, doubted that the costs could be less than £5 million. The annual revenue cost has been estimated at between £2 million and £2.7 million, based on a 60% renewal rate in the UK between 2008 and 2017. I would prefer to write to the noble Lord in greater detail on that.

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[Lord Warner]

With due respect to my noble friend, I am not so worried about that at the moment. I may become worried when I see the basis on which the consultations are taking place. I think the Grand Committee—and I in particular—would like to see what system the Government are using for consulting on these regulations.

[Lord Henley]

My Lords, I can make it clear that, throughout all these SIs, the Government have been engaged in what one might call a cross-government approach to consultation, to make sure that we get things right. We obviously cannot consult in the way that we would normally do when there is more time. However, as I made clear on the first and second orders, and now this, there has been a degree of consultation between the IPO and others. If the noble Lord will bear with me, I will expand on that in a letter. The important thing is that we are just dealing with the no-deal option here. When it comes to further arrangements, more consultation will obviously be necessary. I know that the noble Lord has particular concerns. He has come to see me and has been talking to my officials. In the event of there being a deal, we will want to make sure that we continue with those discussions to make sure that we get this right.

[Lord Warner]

I am sorry to be difficult, but I am still trying to grapple with this. Are the Government actually leaving it to the civil servants to decide how to do the consultations individually, regulation by regulation? Or is some kind of guidance being used for this raft of regulations? Can we be clear whether there have been any directions or guidance to them, or have they been left to make up their own arrangements according to each set of regulations?

[Lord Henley]

I ought to make it clear that the IPO discusses these matters with DExEU to agree an approach. We want to make sure that there is a similar approach across Government. I can expand on that in any letter I write to the noble Lord. It is not just a matter for this department or that one, as the noble Lord would put it. I am now going wide of my brief, but there is a degree of consistency when dealing with the no-deal regulations to make sure that we get this right. I see that the noble Lord, Lord Stevenson, is itching to get to his feet, so I will give way, but I agree to write to the noble Lord on this point.

[Lord Stevenson of Balmacara]

I have read similar passages in the SIs from the Treasury which were due to—but will not—be discussed this evening. They reflect a different approach, which the Minister mentioned he would feed back to officials in due course. He talked about an all-of-Government approach to this, but that has not been borne out by what we have in front of us. I will be interested to see the letter which explains what is happening, particularly in relation to the department for which he is responsible. In fairness, that is all he can answer for, but if it is possible to add to that a wider brief about what is happening more generally, Ministers in other departments would find it interesting.

The second point is that I am sure these issues are not being raised on the particularity of these SIs alone. Surely they are being raised because what we are concerned about here is that the Government cannot do their job properly in regulating for the future if they do not have the trust and enjoy the confidence of the sectors that they are engaging with. Here we are in a situation where some advice is being taken from some people, and some are being labelled as “trusted” while others are therefore labelled as not trusted. I do not think this is a very good basis for going forward, and I wonder if the Government might like to reflect on that.

[Lord Henley]

My Lords, I will certainly look at what the Treasury is recommending. As I say, we have consulted DExEU. I can certainly give an assurance that all those whom we consult will be trusted. I am sure my noble friend Lord Deben would be the first to admit that he was possibly being mischievous when he tried to imply, merely because the word “trusted” appeared in one Explanatory Memorandum but not in another, that there was some element of a lack of trust by this Government. If any noble Lords think that is the case, I would thoroughly refute it.

[Lord Tyler (LD)]

The Minister said just now that the reason why he could not be confident of the extent of the consultation was the shortness of time. As I understand it from the Explanatory Notes, the major issues that were going to be addressed in this particular statutory instrument were laid out in the technical notice produced by the IPO back in September of last year, so there have been four months where presumably the main issues have been subject to consultation. That is not really a shortness of time; there was quite a lot of time in those four months for the consultation to take place. When he is addressing this issue in his letter, I wonder if he will be able to address why he thinks that the shortness of time in this case has caused so much difficulty in making the consultation as full and comprehensive as it should be.

[Lord Henley]

I will certainly address that in my letter and ensure that the noble Lord receives it.

I turn to the question of jurisdiction. The noble Lord, Lord Clement-Jones, asked which court has jurisdiction if the validity of the original trademark is challenged. We have made provision as to how pending proceedings before the UK courts on exit day will be dealt with: they will continue on the basis of the EU regulation. New cases brought after exit day will be dealt with by courts in the individual remaining member states.

Lastly, I turn to the point made by the noble Baroness, Lady Bowles, about the Paris convention, a point that I think she described as appealing to lawyers. Well, here is one lawyer that it does not appeal to because I do not particularly understand it. Again, it will have to be dealt with in subsequent correspondence but I am advised that the UK application will in addition enjoy the priority right claimed by the EU trademark application. I hope that helps, but if I can expand on that matter then I shall do so.

I was about to move the Motion but I can see that I am not going to be allowed to, so I will give way for one last time to the noble Lord, Lord Clement-Jones.

[Lord Clement-Jones]

I am deeply grateful to the Minister. I did not really think that his answer on the jurisdiction point was completely comprehensible. I hope he is going to include it in the letter that he writes because I am not sure about the exit date that he was talking about. He seemed to be saying that a different jurisdiction applied post the exit date as opposed to pre the exit date. I must admit that that is not entirely clear to me because the comparable right, which is derivative, is designed to spring up precisely after the exit date. I would really like to see a full explanation in his letter.

[Lord Henley]

For once, my Lords, I thought the noble Lord had said that my explanation was completely explicable but I imagine that he said it was inexplicable, so I will certainly include that in the letter that I write. I beg to move.

[The Deputy Chairman of Committees (Baroness Garden of Frognal) (LD)]

The Question is that the Grand Committee do consider the Trade Marks (Amendment etc.) (EU Exit) Regulations 2018.