UK Membership of the Hague Agreement Delayed

On 9^th January 2018, Sam Gyamih MP was appointed as a joint Minister for Higher Education at the Department for Business, Energy and Industrial Strategy and the Department of education, and the UKIPO has recently confirmed that he is responsible for Intellectual Property.  In the pre-Brexit years, news of a new IP Minister for the UK may have meant little of significance to anyone except, perhaps, a small minority of IP practitioners.  However, in the current political climate, he has had to ‘hit the ground running’, because the future of Intellectual Property legislation in the UK, post-Brexit, including legislation relating to the UK’s participation in international IP systems, seems to lie in his hands.

Previous IP Minister, Jo Johnson dealt with most elements relating to the UK’s participation in the Unified Patent Court (UPC), but there is one last legislative step remaining, and that is the Privy Council’s approval of one draft Statutory Instrument.  This approval was expected to take place in early February 2018, but as of today’s date, it has not yet happened and, until it does, the UK will not be in a position to ratify either the UPC’s Protocol on Privileges and Immunities or the UPC Agreement itself.

However, another significant issue in the IP world, is the UK’s membership of the Geneva Act of the Hague Agreement, which is an international system for the registration of designs ( see here for more detail).  The UK has, for some time (in fact, since 2008), effectively already been a member of the system by virtue of its EU membership so that:

1. a UK entity could use the system; and
2. entities of other member countries could effectively “designate” the UK by designating a Community design in their application.

Post-Brexit, the UK will need to be a member of the Geneva Act of the Hague Agreement for either 1) or 2) above to be possible.  It has, until recently, been expected that the UK would become a member of the Hague Agreement on 31^st March 2018 and that this would come into force on 6^th April 2018.  However, The Designs (International Registration of Industrial Designs) Order 2018 (S.I. 2018 No.23) was only published last month, and signed by Sam Gyamih on 11^th January 2018.  There is one step remaining before the UK can be a member of the Hague Agreement, namely the deposition of the instrument of ratification (under Article 28(3) of the Geneva Act of the Hague Agreement) and only three months after that will the UK become a member.  So, whilst we can expect the instrument of ratification to be deposited fairly swiftly now, it seems we cannot expect to become members before June 2018, and it may be later than that.

WJ Comment: The UKIPO said, in its Explanatory Memorandum to the above-mentioned Order: “The result of the EU Referendum means that it is important to join [the Hague Agreement] in a national capacity.  If we do nothing, UK businesses will lose access to the international registration system when the UK leaves the EU” (see http://www.legislation.gov.uk/ukdsi/2017/9780111160794/pdfs/ukdsiem_9780111160794_en.pdf).  More generally, the UK’s independent participation in international IP systems will be, and remain, of paramount importance to the economic growth of the country when it leaves the EU and in the years following that, and we think that our new Minister has some interesting times ahead.