Among the Government’s proposed amendments to the Rome II Regulation set out in their 10 December 2018 draft Regulation (“The Law Applicable to Contractual Obligations and Non-Contractual Obligations (Amendment etc.) (EU Exit) Regulations 2018”) are some interesting changes to the choice of law provisions in Article 8(2) relating to infringements of unitary Community intellectual property rights. These changes reflect the fact that, absent some agreement between the UK and the EU, such rights will cease to have any effect in the UK after Brexit. The Government currently intends to replace them with new, equivalent rights, as indicated in their technical notices on intellectual property published on 24 September 2018.
Unitary Community Intellectual Property Rights
A “unitary Community intellectual property right” is a right arising from, e.g:
The current position is that a claim for an infringement of a unitary Community intellectual property right, the applicable law for any question is determined by reference to:
Rome II and Intellectual Property Rights in the Withdrawal Agreement
Article 66 of the Withdrawal Agreement provides that in the United Kingdom the Rome II Regulation (i.e. the text as unamended as applied in the courts of the EU 27) shall continue to apply in respect of events giving rise to damage, where such events occurred before the end of the transition period. These might result in claims which arise a number of years after that period.
The Withdrawal Agreement also provides for continued protection in the UK intellectual property rights registered or granted before the end of the transition period (Article 54), including unregistered Community designs (Article 57), with a detailed registration procedure set out in Article 55.
Amendments to Article 8(2) of the Rome II Regulation
The amendments to Article 8(2) of the Rome II Regulation are intended to fulfil part of the Government’s promise in their intellectual property technical notices to make provision regarding the status of legal disputes which are ongoing before UK courts when the UK exits the EU. In practice, these amendments will be relevant from 30 March 2019, if the UK leaves without any transition agreement, or to new claims that arise after the end of any transition period when the (unamended) Rome II Regulation has ceased to apply. I shall refer to that position as simply “Post-Brexit”.
These Post-Brexit changes to Rome II are as follows:
“2A. In paragraph 2, “unitary Community intellectual property rights” refers to that right as it had effect immediately before exit day”.
The effect of these changes can be summarised briefly:
Choice of Law for Other Intellectual Property Torts
Article 8 of the Rome II Regulation as enacted contains three specific rules for the applicable law of non-contractual obligations arising from an infringement of an “intellectual property right”: a concept that Recital (26) of that Regulation made clear “… should be interpreted as meaning, for instance, copyright, related rights, the sui generis right for the protection of databases and industrial property rights”.
Post Brexit, two of these three rules are being retained unchanged in English domestic law. The key provision is Article 8(1), which provides that the law applicable to a non-contractual right arising from an infringement of an intellectual property right “shall be the law of the country for which protection is claimed” and which preserved the acknowledged principle of the lex loci protectionis is naturally maintained. So too is the restriction on party autonomy that prohibits any derogation from by an agreement from the applicable law selected under Article 8 which continues unchanged in Article 8(3) of the version of Rome II that will be retained in UK domestic law.