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With millions of businesses across the UK and EU heading towards an uncertain post-Brexit future, one critical issue has continued to provoke widespread concern, as Victor Caddy of Wynne Jones IP and Frank Reijnen of AIPEX explain.
Intellectual property and, more specifically, trademarks and design rights, after the UK’s departure from the EU remain a troubling issue for businesses and lawyers on both sides of the Channel.
Until Brexit, businesses using the services of the EU IP Office (EUIPO) will continue to receive potential trademark and design rights protection across EU28, with UK attorneys able to freely represent them before the EUIPO, but all this could change as early as April 12, (the planned date for Brexit at the time of writing).
"With AIPEX, there is a single point of contact for all EU and UK trademark and design work post Brexit, ensuring there is no added complexity."
After Brexit, the IP system is set to undergo fundamental alterations.
Victor Caddy, director and trademark attorney at leading IP firm Wynne Jones IP, says the most crucial change will be the management of EU IP rights, as the UK will no longer be part of European trademarks and design registration systems.
“This change will be problematic for business looking to register either of these rights in the EU beyond the Brexit deadline, and also for those looking to challenge any legal infringements after April 12,” Caddy says.
How will trademarks and design rights be approached legally after the UK exits the EU?
“From a legal perspective, Brexit will see existing EU registered trademarks split, or cloned, into two trademarks, creating an EU27 mark and UK trademark, at no extra cost to the rights holder. This cloning process will also apply to registered designs post Brexit,” he explains.
“However, if an EU trademark, or design, application is pending at the date of the UK’s exit, owners will have to refile at the UK IP Office within nine months of the UK leaving the EU to retain a UK trademark registration.
“The situation regarding what will happen to EU and UK unregistered design rights is complex,” Caddy says.
At Wynne Jones IP, the protection of designs and trademarks has been streamlined to ensure a seamless transition of IP matters after Brexit. The company, which offers expert advice across all aspects of trademarks, design rights, and patents, will still offer a full EU trademark and design registration service through AIPEX BV, a specialist pan-EU IP firm, of which Wynne-Jones IP is a part owner.
AIPEX has offices across 11 European locations, offering a pan-EU service plus national expertise in 15 EU countries.
Frank Reijnen, chief executive officer of AIPEX BV, says: “For UK clients, Wynne Jones will operate as the trusted advisor on IP, while retaining expertise on EU trademarks and designs.
“Brexit does not affect the service of AIPEX, making it ideally placed to support clients after Brexit.”
This is particularly vital as, in most scenarios, UK trademark attorneys will be unable to represent in front of the EUIPO, post Brexit, according to Caddy.
“Some UK IP firms have been devising solutions to circumvent this, such as opening offices in the EU or the EEA,” he says.
“Some UK trademark attorneys are engaged in taking the Republic of Ireland professional trademark exams (so that they can operate out of Ireland). Other IP firms will probably need to broker deals with EU27 based IP firms, who will register EU27 trademarks and designs and represent in front of the EUIPO.
“With all of these solutions, the prosecution of EU and UK trademarks and designs is likely to become more convoluted, which could see clients’ IP costs rise quickly.”
Thanks to the existing setup of Wynne Jones IP and AIPEX BV, businesses can enjoy full representation across the EU, without facing increased management complexity or relying on the services of an unfamiliar IP firm.
“UK trademark and design attorneys in AIPEX, from Wynne Jones IP, are registered AIPEX attorneys in Rotterdam, Netherlands and will be able to represent at the EUIPO in relation to disputes surrounding EU-registered trademarks and EU-registered designs,” says Reijnen.
“With AIPEX, there is a single point of contact for all EU and UK trademark and design work post Brexit, ensuring there is no added complexity involved in an already challenging situation.
“We believe that when Brexit makes EU IP management more difficult, it’s vital to go for the most simple, yet effective, IP prosecution solution and that is AIPEX, BV.”
How to prepare
With Brexit and its complexities approaching, Caddy has advice for businesses arranging last-minute protection of their trademark and design rights portfolios.
“Preparation is absolutely key. It’s essential that businesses review their IP portfolios now and take advice if necessary.
“Overall it’s vital that businesses ensure the management of their IP portfolio post Brexit is as streamlined and as cost-efficient as possible.
“To give the best opportunity for this to happen, business should speak with the IP firm they use to prosecute EU and UK trademarks and designs, to seek reassurance from them that they have effective management processes in place after Brexit.
“At this critical stage they should have plans in place, and if they don’t it’s time to ask why. Drill down into the facts; get clear information from them about how they intend to service EU and UK registered trademarks and designs after Brexit.
“Interrogate any cost increases that you may incur, ask searching questions if the firm is working with an EU middleman who is commissioned to carry out EU trademark work on their behalf,” he concludes. l
Victor Caddy is a trademark and design attorney and partner at Wynne Jones IP. He has more than 25 years’ experience as a specialist trademark and design attorney, providing proactive strategic advice across a range of sector specialisms. He is also a member of the International Trademark Association’s Emerging Issues Committee. He can be contacted at: email@example.com
Frank Reijnen, is the chief executive officer of AIPEX BV. He has more than 30 years of management experience in professional services, mostly at senior level. He is a business entrepreneur specialising in strategic alliances and is a lawyer by training. He can be contacted at: firstname.lastname@example.org
Wynne Jones IP, AIPEX, Brexit, design rights, EUIPO, trademark registration, IP portfolio, no deal, EU trademarks, attorneys. IP firms, cost-efficiency