This house believes that IP law in post-Brexit Britain will benefit from leaving the binding jurisdiction of the ECJ

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Howard Ricklow, Collyer Bristow, London


Collyer Bristow hosted its annual Intellectual Property Debate on 29 June, which was greeted with great enthusiasm by all attending. The debate was chaired by Sir Richard Arnold, a judge of the High Court of Justice, Chancery Division, now appointed as Judge in Charge of the Patents Court. The motion was proposed by Martin Howe, QC, supported by Dr Gunnar Beck, Reader in Law at the School of Oriental and African Studies (SOAS) University of London. The motion was opposed by Professor Lionel Bently, Professorial Fellow at Emmanuel College, Cambridge and Door Tenant at 11 South Square, supported by Professor Tanya Aplin of Kings College London.

The chairman, Sir Richard Arnold, reminded us that the Government had published a White Paper proposing that after the date of the United Kingdom’s exit from the European Union, the status of European Court of Justice (ECJ) decisions will be equivalent to decisions of the Supreme Court, binding on lower courts but with the Supreme Court free to depart from them to the extent it may currently depart from its own decisions. The Government’s White Paper does not state what the status of new ECJ decisions will be. Clearly, they will be not binding but the question is where they will sit, especially in so far as legislation that remains unchanged post-Brexit.

Martin Howe, proposing the motion, argued that the correct perspective is that the ECJ is a multi-national court in which the UK participates fully in nominating judges and providing a member. It is the UK’s court as much as the court of any other Member State. Following the UK’s departure from the EU, the ECJ will become a completely foreign court with which the UK will have no involvement and no right to participate in its procedures. He argued further that it is completely contrary to international state practice for a state to accept the jurisdiction of another state’s court and for the UK to accept the ECJ’s continuing involvement, aside from in a limited transitional context, politically will be completely unacceptable. Turning specifically to intellectual property, Mr Howe asked whether in any event it was a good idea for the EU Court to have binding EU court decisions in relation to intellectual property. The ECJ was never established to be an intellectual property court, but for trade and economic issues. Thus, its role was mainly in dealing with how intellectual property rights would be impinged upon when goods/ services crossed borders, for example in the Centrapharm case, when IP rights owners placed goods on the market in the EU and then could not enforce rights in other Member States.

There was a very big change from the mid-90s onwards when the court took on a new and very different role and effectively became the Court of Appeal for increasing areas of substantive law. IP law was becoming increasingly harmonised (eg, the Copyright and Information Society Directive which resulted in the court becoming the arbiter in large areas of substantive IP law).

Mr Howe went on to argue that the court’s make up and constitution mean that is not fit to undertake this task. Generally, not one of the judges had enough IP experience to include it in their CVs. ECJ judges are, typically, unaware that some of the copyright doctrines they support are continental doctrines which are quite controversial in the wider world and are not accepted in the Berne Convention. Whilst there may be an argument for a higher specialised court in IP, such as in Germany or our own Court of Appeal where we have IP specialist former practitioners mixed with judges from other backgrounds, there is very little rational explanation for having a high-level court completely devoid of specialised judges given the cost in money, delay and damage to litigants. Giving examples, Mr Howe went on to argue that the ECJ does one of two things: they either provide an obscure answer to the question, making the matter itself more obscure or they simply refuse to answer the question asked of them.

In conclusion, Mr Howe argued that the UK can do without the binding jurisdiction of the ECJ from 30 March 2019. We previously have had a system of various tiers of court that did a good job and we do not need the ECJ to further interpret the law, rather we simply need to have the self-confidence to do it ourselves.

Professor Bently opened his opposition to the motion by stating that it was well known that he had on occasion been critical of the ECJ. However, he would argue that the jurisdiction had been mischaracterised and that the ECJ had in fact done a pretty good job.

Although, as Mr Howe had pointed out, the UK will no longer be contributing to ECJ jurisprudence, our own jurisprudence clearly indicated that the former House of Lords, and now the Supreme Court, regards ECJ jurisprudence as having a status that is virtually binding. In Professor Bently’s view it is likely that, in post-Brexit UK, ECJ jurisprudence will continue to have a quality equivalent to being binding.

Professor Bently argued that the ECJ had actually done a good job and that common criticisms of the court are quite unfair in that any court dealing with the types of issues the ECJ has had to face would have had similar problems, also reaching unclear decisions. It is an extremely busy Court, deciding 700 cases each year, with around 80 IP cases, including appeals from the IPO in relation to trademark decisions. The ECJ has a massive caseload and the work often requires the judges to interpret extremely poor legislation (eg, the Trade Marks Directive).

Professor Bently went on to argue that it is ignorant to criticise the ECJ too much. We should not read the judgments of the ECJ in the way we would read judgments of the English courts. We must accept that is it is a court which is handing down decisions in many cases which are very similar and through this it is gradually developing its own jurisprudence. This should be contrasted with the English courts where it is assumed that each judgment is stand-alone.

Thirdly, Professor Bently argued that it is wrong to criticise the ECJ. Giving an example of a positive ECJ decision, he recounted the controversy over Article 4(1)(b) of the Trade Marks Directive when implemented into UK law regarding the relationship between ‘likelihood of confusion’ and ‘likelihood of association’. The ECJ in its decision in MGN v Canon had dealt very well with a confusing piece of legislation and had settled it.

In summing up, Professor Bently argued therefore that criticisms of the ECJ are unfair, ignorant and wrong.

Dr Beck then spoke in support of the motion. He argued that as well as the cases cited where the ECJ had gone wrong because the judges know no better, in any event it reaches the decisions it does because the ECJ is not impartial and it never set out to be.

Further, Dr Beck argued that, except in one particular case, every judicial review of EU legislation brought to the ECJ found in favour of EU institutions. By contrast, there were hundreds of cases where the ECJ found in favour of the EU Commission in cases where the EU argued that Member States have acted in breach of EU Law. If we are to believe the ECJ, Member States routinely breach EU Law, whilst EU institutions can practically do no wrong. The ECJ, Dr Beck asserted, applies two separate standards of proportionality review: a very exacting one to review the compliance of national laws with supreme EU Law and a much laxer one to review EU legal acts.

He went on to argue that the ECJ routinely disregards wording while interpreting EU Law and favours teleology to suit an ‘ever closer union’.

In concluding, Dr Beck said that whilst the ECJ’s general pro-Union bias often makes its decisions more certain, in IP cases its decisions are, paradoxically, more uncertain. We thus have a court ‘which is clueless combined with little legal certainty’. Echoing the words of Mr Howe, he reiterated that once the UK has left the ECJ it will have no say in in the passing of EU legislation and the ECJ will accord the UK even less respect than it does now. In the circumstances, remaining subject to the ECJ outside the EU would be the worst possible world.

Finally, in opposition to the motion Professor Aplin asserted that Dr Beck had been inconsistent in his criticism. His book actually stated that it was logical for the ECJ to follow an integrationist approach since EU Law has a vagueness. Secondly, Dr Beck’s criticism that the ECJ was clueless because it is starved of IP specialists was odd in that it is a commonplace occurrence in appellant courts, where we entrust the courts to decide our most complex cases without requiring them to be specialists. As against Mr Howe’s comment on timing, Professor Aplin commented that the average time for ECJ decisions was 14 months whilst the average time for the Supreme Court is 22 months. Professor Aplin further argued that we in the UK should not be so sure that our own courts were any better than the ECJ in relation to IP cases. The Supreme Court had decided nine IP cases since it was established in 2009 and none of these decisions could be said to be beyond criticism. In particular, Professor Aplin cited the Trunki decision, as well as several others, where it could be said that the decisions lacked clarity and that there were normatively questionable approaches from the Supreme Court.

Looking at what other options the UK may have she looked at the international dispute settlement system, the World Trade Organization (WTO) dispute panels and the European Free Trade Association (EFTA) court.

In concluding, Professor Aplin argued that we could not and should not escape the jurisdiction of the ECJ.

There followed several questions from the floor after which the motion was put to the vote with those opposing the motion winning the debate.

Whilst we still do not know what the role of the ECJ may be post-Brexit, we were privileged to be subject to a stimulating and thought-provoking debate by our most erudite and splendid speakers and chairman.