The Brexit blues

As the UK shifts closer to its eventual departure from the EU, the country’s intellectual property industry assesses its options and looks to avoid a cliff edge. Kate O’Rourke, president of the Chartered Institute of Trademark Attorneys, explains

How will Brexit affect UK trademark attorneys?

It will affect trademark attorneys because of the work they already do for established clients. Most trademark attorneys are worried about how their clients will be dealing with Brexit because it has such an impact on the protection of trademarks and designs across the EU. There’s a lot of talk currently about what strategies businesses should adopt in order to cope with the aftermath of Brexit on the intellectual property world.

Another issue is that, if the UK does not stay within the European Economic Area (EEA), then potentially, trademark attorneys could lose their rights to represent clients at the EU IP Office. That’s bad for both clients and attorneys. Some cases attorneys have in the EU have been going on for many years.

For example, some of my clients that have EU trademarks and designs have been working with me for more than 20 years. For them to have to change representatives would have an enormous impact on their businesses. We have knowledge of our clients’ businesses and IP that we’ve acquired over years of working with them.

For me, I have one particular client, where I have been working with that client for longer than any of their current management.

That’s why we’re really hoping that the government does decide to stay within the EEA, because if it does, it will be business as usual.

But of course, we will be prepared for the eventuality that we will not be in the EEA, and we’ve been doing a lot of work with our members, the government and other IP law associations to work out what we will do.

For example, we’re currently looking at a long transitionary period that would allow attorneys to continue to represent their clients.

What sort of transitional period are you looking at?

There have been suggestions, one from another IP organisation, that argue there should be a transitionary period of 25 years for IP. This proposal is based on the fact that patents often last up to 25 years, some trademark cases in the EU may not complete for at least 10 years and there are even some EU trademark cases that are still pending from first filing 21 years ago. If we’re looking at a reasonable period of time, then it should be the amount of time that some of these rights last for. Obviously trademarks can last forever, but patents and designs are limited time. Making it 25 years would sit more in the context of patents and designs, although after that there would still be trademarks that would continue to be valid.

We’ve not heard a whole lot from the UK government. From your talks, what is the government doing to secure IP rights?

We’ve had so many meetings, particularly with the UK IP Office. They have put a massive amount of resource into examining what would be the best result. There hasn’t been a statement, but what we do know is that a lot of work is being done behind the scenes. We’ve had numerous meetings and informal consultations, and there is one particular proposal which the consensus seems to think is the best. I can’t say that the government is going to do this, but all of the IP community in the UK is now saying that automatic cloning of trademark and design registrations is what would be the most appropriate solution post-Brexit. Once the UK government can say something, they will have a lot to say. They have been doing a lot of work on this.

How could a “no-deal” scenario, or a scenario where the UK remains outside of the EEA, affect trademark intensive industries?

One of the biggest problems will be that everyone will have to double file. Once in the UK, once in the EU. No longer will you be able to get one unitary right that covers all EU member states. It will cost money. Those seeking trademarks will have to wonder whether to go for the UK market, the EU market or both.

Looking into the future, if we come out of the EEA, after a transition period, then potentially, all of UK PLC will have to be briefing other attorneys in the EU27 to do their work. But it’s not just UK PLC, it’s also US companies and firms. Their entry point into the EU is the UK. London in particular is the first port of call into Europe. We coordinate loads of work for US firms throughout Europe. All of that will change and they will have to find another gateway. That is putting pressure on business and will also cost money. If we have a transitionary period, at least businesses, both trademark attorneys and IP intensive industries, will be able to plan.

How can CITMA attorneys protect/prepare themselves if rights of representation before the EUIPO are taken away?

Lots of different things are being done. Some firms are opening in Ireland, some firms in Brussels. Other firms are merging, or focusing on expanding their offices in EU member states. People are looking at the challenges and thinking about what works best for them.
What we’re trying to do at the Chartered Insitute of Trademark Attorneys (CITMA) is ensure we get as much information together as possible, putting it on our website and letting people know what to do and where to go. If people want to know what our positions are they can go to our website:

Putting the information out is very important. We go to conferences and speak about it and seek as many opportunities as possible to speak out about it, to ensure it is a planned exit.

The EU Commission released its own position paper on IP rights post-Brexit, can the UK government do something similar?

Absolutely and we are calling on them to do it. As soon as the trade negotiations begin, as soon as they are allowed to say something, we want a statement. Businesses want certainty. They want the government explaining what they plan to do.

I am confident that we will have an agreement that works well for rights owners. Am I confident about rights of representation? No. We commissioned our report on the financial impact on Brexit and potentially there is a lot of loss of business for UK attorneys if there is no deal done for rights of representation. We’re not going to stop lobbying though, we have figures now and we’re meeting with MPs regularly. We’re talking to as many people within government as possible to show them that they have to focus on this.

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