Time to slam on the Brexit

As Brexit negotiations begin, it is still unclear where trademarks fit in. But, with two years to get a good deal, the UK government needs to consider all aspects

With the UK commencing its official withdrawal from the EU last week, it now stands to negotiators and legislators to shape the future of the union.

Intellectual property rarely tops the agenda when politics are involved, but that doesn’t mean that industry organisations aren’t pushing to have their voices heard in the two-year negotiation process.

The UK Intellectual Property Office (UKIPO) has been working to bring these issues to the forefront of Brexit negotiations, according to Adam Williams, acting head of international policy at the UKIPO.

Williams was speaking at the Chartered Institute of Trade Mark Attorneys (CITMA) Spring Conference in London in February.

He said that there was an “enormous amount of work going on to tackle the challenges of IP rights post-Brexit.”

“When I agreed to speak [at the conference], I thought we may have some more concrete detail on Brexit—but that is not the case,” Williams conceded.

However, despite “grave uncertainty” about what the UK’s exit from the EU might mean, the UKIPO is optimistic about a good deal.

The UKIPO is also looking into other, less obvious avenues, such as partnerships with the EU Intellectual Property Office (EUIPO), but it is still too early to tell how negotiations will go.

Williams said that the UKIPO was having almost “daily conversations” with the UK’s Department for Exiting the EU to help shape post-Brexit IP.

Kate O’Rourke, president of CITMA, says that for those in the trademark profession, it is “business as usual”.

“The UK remains in the EU trademark and design systems,” she says. “UK attorneys continue to be able to represent clients before the EUIPO.”
“CITMA favours an outcome which maximises legal certainty and minimises the burden on business. Ensuring the continued coverage of EU trademarks and registered community designs in the UK is of paramount importance to international business and the creative industries.”

She adds: “We are also seeking an outcome which sees mutual recognition of qualifications and which enables UK practitioners to represent clients before the EUIPO.”

Michael Hawkins, partner at Noerr Alicante IP and member of the International Trademark Association’s (INTA) Brexit rapid response group, says that while there was a lot of immediate panic as a result of the Brexit referendum in June last year, calm is prevailing with the understanding that no changes are imminent.

“Most industry professionals are less anxious now, knowing that there are a lot of negotiations ahead,” he says, “but we have to be prepared to negotiate and lobby strongly.”

Hawkins says that attorneys are happy with the way the EU trademark system currently works, “so they will want to stay as harmonised as possible. They want it to be close to the status quo.”

“Harmonisation is really something we’ve been working towards in trademarks for years. It would be a huge shame to lose that. But we’re pretty confident that there will still be high levels of harmonisation,” Hawkins adds.

The future of the EU trademark

Hawkins and O’Rourke are confident that EU trademarks will be protected in the UK.

Hawkins does not expect those who wish to retain them to lose any rights, while O’Rourke predicts that there will likely be legislation that enables existing EU trademarks to continue to be protected in the UK.

“CITMA has outlined a number of possible options for how this could be handled and ensure that protection is maintained,” she says.

“The UKIPO has reiterated that no option is off the table, including what we have called ‘UK Plus’—where existing EU rights would extend to the UK.”

“We have been working closely with the UKIPO, advising on the possible options and what needs to be considered if implementing them.” 

There are a number of different solutions to the EU trademark problem. One, known as the Montenegro approach, would allow all existing EU trademark registrations to be automatically entered onto the UK trademark register as UK trademark registrations.

But Montenegro itself saw problems with this approach during the breakup of Yugoslavia. Initially, all IP rights registered at the Montenegro IP Office were automatically valid, but after two years, the office had a problem with unrepresented trademarks.

A new law created a specific procedure of entry into the Montenegrin register and all trademark rights had to be re-registered within 12 months.

In the UK’s case, with more than 1.3 million trademarks on the EUIPO register, such an approach would be a “big undertaking”, says O’Rourke.

Despite this, the Montenegro approach is one that CITMA has outlined for both trademarks and registered designs.

INTA continues to explore post-Brexit options, and while the Montenegro approach sounds attractive, Hawkins says, there are still potential issues.

He explains: “The UK has an intent to use provision in its trademark law, so it’s difficult to reconcile that with an automatic import of 1.3 million EU trademarks into the UK register that did not have an intent to use declaration when they were originally filed.”

Band of Brexit responders

With so many hurdles to overcome, it stands to reason that industry associations will be looking to create stronger relationships to present a united front during Brexit negotiations.

For INTA, this has already begun, and the association is “very conscious that we speak with a stronger voice if we speak together”, Hawkins says.

“We will definitely be trying to speak with one voice and join forces with as many other associations on as many issues as possible.”

Earlier in March, O’Rourke and CITMA vice president Tania Clark met with sister associations from across Europe to discuss IP post-Brexit. O’Rourke says: “The sister organisations reiterated the need for continued collaboration and our mutual roles in supporting the business community and creative industries.”

“We are seeking to influence government and decision makers to ensure IP and its importance are recognised in any negotiations and is considered in full when it comes to negotiations and preparing for life after the UK exits the EU.”

Hawkins adds that these kinds of negotiations, even outside of the core Brexit talks, will likely be based on the political will of the countries involved.

“For example, I don’t expect that the UKIPO and EUIPO will have joint declarations unless the European Commission and UK government approve,” he says.

Ultimately, Hawkins says the future of trademarks post-Brexit “depends on the will of the negotiators at a higher level”.

“But there is so much detail to these negotiations—they will definitely have to hand it down somewhat to the experts, such as the UKIPO and the EUIPO.”
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