The Retained EU Law (Revocation and Reform) Act 2023 (REULA) is now on the statute books. As has been reported widely, it revokes, at the end of 2023, a long list of retained direct and subordinate legislation derived from EU legislation. This will impact intellectual property law in the UK as the UK separates further from the EU.
Background
Upon the expiry of the transition period on 31 December 2020, extensive amendments took effect to the UK's body of legislation governing intellectual property law, among other things in order to extract UK rights from existing EU-wide IP rights and to preserve the availability of comparable rights in the UK moving forward. Principles recognised in case law by the CJEU (or a UK court), before 31 December 2020, formed retained EU law, but since 31 December 2020, the Supreme Court and the Court of Appeal can (and may) depart from any retained EU case law in the same way in which they can depart from their own case law. Where a retained provision has been amended since 31 December 2020, the extent to which both the supremacy of EU law (including indirect effect) and prior domestic and CJEU case-law remains binding depends on whether that is consistent with the intent of the modification. (Note the concept of 'indirect effect' requires national courts to interpret their national laws (not limited to but particularly those that implement EU directives) in the light of the wording and purpose of EU legislation (as interpreted by the CJEU).
The REULA in respect of intellectual property?
In the REULA the provisions to be removed from the UK's body of legislation relating to intellectual property at the end of 2023 are limited and historic (superseded or inoperable).
However, the more general provisions contained in the REULA will impact intellectual property law in the UK more widely. This is because, at the end of 2023, the REULA ends the principle of supremacy of EU law (including the 'indirect effect' principle) in relation to all enactments or rules of law whenever passed or made.
Further, from 1 January 2024, any higher court may depart from its own retained domestic case law if it considers it right to do so having regard to (among other things): the extent to which the retained domestic case law is determined or influenced by retained EU case law from which the court has departed or would depart; any changes of circumstances which are relevant to the retained domestic case law; and the extent to which the retained domestic case law restricts the proper development of the law.
So, for retained provisions of EU-derived domestic legislation, such as the provisions in the Trade Marks Act of 1994 (TMA) governing infringement (section 10), from 1 January 2024 interpretation will be in accordance with purely domestic principles.
What are domestic (UK) principles of statutory interpretation?
The Supreme Court recently re-stated the domestic principles governing statutory interpretation in the UK, in R (Project for the Registration of Children as British Citizens) v Secretary of State for the Home Department [2022] UKSC 3 ('R (PRCBC) v SSHD'). Lord Hodge explained:
"29 The courts in conducting statutory interpretation are 'seeking the meaning of the words which Parliament used': Black-Clawson International Ltd v Papierwerke Waldhof-Aschaffenburg AG [1975] AC 591, 613 per Lord Reid. More recently, Lord Nicholls of Birkenhead stated: 'Statutory interpretation is an exercise which requires the court to identify the meaning borne by the words in question in the particular context. (R v DEFRA, Ex p Spath Holme Ltd [2001] 2 AC 349, 396.) Words and passages in a statute derive their meaning from their context. A phrase or passage must be read in the context of the section as a whole and in the wider context of a relevant group of sections. Other provisions in a statute and the statute as a whole may provide the relevant context. They are the words which Parliament has chosen to enact as an expression of the purpose of the legislation and are therefore the primary source by which meaning is ascertained. There is an important constitutional reason for having regard primarily to the statutory context as Lord Nicholls explained in Spath Holme, p 397: 'Citizens, with the assistance of their advisers, are intended to be able to understand parliamentary enactments, so that they can regulate their conduct accordingly. They should be able to rely upon what they read in an Act of Parliament'.
30 External aids to interpretation therefore must play a secondary role. Explanatory Notes, prepared under the authority of Parliament, may cast light on the meaning of particular statutory provisions. Other sources, such as Law Commission reports, reports of Royal Commissions and advisory committees, and Government White Papers may disclose the background to a statute and assist the court to identify not only the mischief which it addresses but also the purpose of the legislation, thereby assisting a purposive interpretation of a particular statutory provision. The context disclosed by such materials is relevant to assist the court to ascertain the meaning of the statute, whether or not there is ambiguity and uncertainty, and indeed may reveal ambiguity or uncertainty: Bennion, Bailey and Norbury on Statutory Interpretation, 8th ed (2020), para 11.2. But none of these external aids displace the meanings conveyed by the words of a statute that, after consideration of that context, are clear and unambiguous and which do not produce absurdity.
31 Statutory interpretation involves an objective assessment of the meaning which a reasonable legislature as a body would be seeking to convey in using the statutory words which are being considered. Lord Nicholls, again in Spath Holme [2001] 2 AC 349, 396, in an important passage stated: "The task of the court is often said to be to ascertain the intention of Parliament expressed in the language under consideration. This is correct and may be helpful, so long as it is remembered that the 'intention of Parliament' is an objective concept, not subjective. The phrase is a shorthand reference to the intention which the court reasonably imputes to Parliament in respect of the language used. It is not the subjective intention of the minister or other persons who promoted the legislation. Nor is it the subjective intention of the draftsman, or of individual members or even of a majority of individual members of either House ….Thus, when courts say that such-and-such a meaning - cannot be what Parliament intended - , they are saying only that the words under consideration cannot reasonably be taken as used by Parliament with that meaning'."
In August 2023, in a High Court judgment determining a trademark dispute (E-Accounting Solutions Limited t/a AdvanceTrack v Global Infosys Limited t/a GI Outsourcing [2023] EWHC 2038 (Ch)), HHJ Tindal explained that on the same ordinary domestic principles of statutory interpretation, an EU directive leading to domestic legislation can be seen as a form of 'external aid' to its interpretation. Indeed, in the Supreme Court's analysis in Brent LBC v Risk Management Partners [2011] UKSC 7, EU law in the form of ECJ authority was the context in which the relevant domestic legislation was made and it threw light on the parliamentary intention for the regulations when adopting domestic principles of interpretation.
How will post-REULA domestic interpretation alter the application of EU-derived intellectual property provisions?
In E-Accounting Solutions v Global Infosys, HHJ Tindal determined the dispute between the parties in the case before him by interpreting and applying s.10 TMA in accordance with the provisions laid down by the EU (Withdrawal) Act 2018. This included consideration of CJEU (and English) authorities going to 'keyword' and 'ad text' use.
Having determined the issues before him, HHJ Tindal nevertheless took the opportunity in his judgment to consider how the same dispute would be determined following the change to statutory interpretation introduced by REULA. He reached the same conclusion, but in part by drawing on the same CJEU authorities as an external aid to parliament's intention when purposively interpreting the UK legislation ([115]):
"There is no statutory requirement that its use must 'adversely affect the functions of the trade mark' and it is not so obviously intrinsic or implicit as with s.10(2) or s.10(3) TMA. Indeed, there was no such express requirement in the directive – it was a CJEU gloss in Arsenal and other cases derived from the Recitals of the TMDir, developed in Google France. However, that is where a purposive interpretation following Brent would come in. s.10 TMA as amended in 2019 was plainly intended to implement the Recast Directive which was intended to mean the same as the ECJ and CJEU had interpreted the TMDir - so it is an 'external aid'. In Brent the word 'contract' was interpreted purposively to restrict its normal meaning to fit the directive it was intended to implement as it had been interpreted by the ECJ. So too here could the phrase 'a person infringes a trademark' in each of ss.10(1), 10(2) and 10(3) TMA be interpreted to require 'infringement' in the sense of adverse effect on the trade mark. That would add little if anything to the other elements of s.10(2) and s.10(3) TMA, but it would add something to the other elements of s.10(1) TMA. In the R(PRCBC) sense, it cannot have been Parliament's intention or purpose to render unlawful something which has no adverse impact whatsoever on a trade mark. Alternatively, there is an analogy with how Arnold LJ explained in Muzmatch at para 115 the so-called 'defence' of 'honest concurrent use'. It is not a defence at all, but an answer to alleged infringement in rebutting the presumption of a 'likelihood of confusion' under s.10(1) TMA, and relevant to whether there was such a 'likelihood' under s.10(2) TMA, or to whether there was any 'detriment' or 'unfair advantage' under s.10(3) TMA. Similarly, if there is no 'adverse effect' on the functions of the trade mark, there can be no 'unfair advantage / detriment' under s.10(3) TMA or 'likelihood of confusion' under s.10(2) TMA or true 'double identity' under s.10(1) TMA. Indeed, as in Muzmatch, this analysis would also be open to the burden shifting to the defendant to prove no adverse effect' once the explicit statutory elements were proved by the claimant. Either way, on a 'purposive interpretation' of s.10(1) echoing Brent, I would have found it infringes, both by keyword and Ad Text use of 'Advancetrack'."
Therefore the REULA, and specifically the end of the principle of supremacy of (retained) EU law in the UK, does not mean that the courts will be starting from scratch when called upon to interpret a UK statutory provision derived from EU legislation. The body of UK case law governing its interpretation will continue to exist, and EU legislation, working documents and case law may (where appropriate) be drawn upon as an aid to the interpretation of the statutory provision.
However, to the extent that domestic case law has been determined or influenced by EU case law and a UK higher court (the UK Supreme Court, the Court of Appeal or the High Court when sitting as a court of appeal) considers that it is right to depart from its own retained domestic case law, it may do so. In the sphere of intellectual property law (specifically in respect of trademarks, copyright, designs and supplementary protection certificates), the overwhelming body of domestic case law derives from EU case law.
In IP cases, prior to the REULA, the courts have not been quick to depart from retained EU authorities. For example, in TuneIn v Warner Music [2021] EWCA Civ 441, the Court of Appeal declined to depart from retained CJEU case law on the meaning of 'communication to the public'. Their refusal was for reasons including that there had been no change in the domestic legislation or international legislative framework, that the interpretation of the term was on any view a difficult task, and that starting all over again would create considerable uncertainty. The changes introduced by the REULA could tip the balance in such an assessment, by shifting the role of EU authorities to (at best) an aid in the purposive construction of the language enacted by Parliament in the UK.
REULA demands thinking for the future
Whether the changes introduced by the REULA will change the way any particular statutory provision is interpreted and applied by the courts, leading to a different outcome for the parties to a dispute, will depend upon the circumstances. The circumstances will include the natural meaning of the words used, the background to the introduction of the statutory provision, whether (and why and when) it has since been amended, and the extent to which the principles presently understood to govern its interpretation have been established by CJEU case law. These circumstances may differ as between different provisions within a single statute.
Consider for example the Copyright, Designs and Patents Act 1988, which states, in section 1, that copyright subsists in "original" literary, dramatic, musical and artistic works. Initially, the domestic interpretation of the term "original" continued to reflect principles developed under previous copyright legislation in the UK. Following the introduction of European legislation impacting copyright law and ECJ/CJEU rulings on its interpretation, the principles employed in the UK changed, in order to align with the European authorities. With the end of the principle of supremacy of EU law in the UK, domestic principles of interpretation will again apply. Will we see a shift to the concept of originality developed in the case law in the UK prior to the 1988 Act again informing the interpretation of the statutory provision?
Another example is retained Regulation (EC) 469/2009 concerning the supplementary protection certificate for medicinal products. This regulation, and the earlier Regulation 1768/92 which it replaced, have been the subject of repeated references to the ECJ/CJEU and conceptual disagreement with specialist judges in the English High Court as to their interpretation. The end of the principle of supremacy of EU law ends the retained EU law status of many of the CJEU judgments that the judges in the UK have at times found difficult to reconcile or apply, and which have limited, in practice, the availability of a supplementary term of patent protection in respect of medicinal products. While Parliament has not legislated afresh in the field of patent term extension, the end of the supremacy of EU law presents stakeholders with an opportunity to shape afresh the interpretation and application of the existing retained provisions.
On the other hand, the interpretation of a statutory provision amended shortly before Brexit took effect, in order to implement EU legislation shaped by retained CJEU authorities, is likely, as in the E-Accounting Solutions case, to continue to be interpreted by reference to relevant CJEU authorities as an aid to Parliament's intent. In such circumstances, the UK's departure from the EU's aquis of 31 December 2020 is likely, in practice, to remain gradual.
The REULA therefore presents litigants and their representatives with new possibilities for legal innovation. Indeed, HHJ Tindal observed ([116]):
"It may be wise for a small business to get advice, especially in these legally as well as commercially uncertain times, as our legal system begins in earnest to detach from the EU."
Businesses generally must surely be similarly impacted and advised.
So think about your dispute(s), current and future, and consider whether it is necessary to think again about how any statutory provision relied upon or asserted is interpreted. Is yours a case for change?
If you have any questions about the points discussed in this article, please get in touch with Kate Swaine and Ailsa Carter.