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22 May 2020TrademarksRory O'Neill

Brexit TM uncertainty harming UK industry, warn lawyers

UK trademark attorneys are growing increasingly concerned over losing business to EU firms after the Brexit process is completed, and say the government must do more.

As it stands, trademark attorneys based in the European Economic Area (EEA) will be able to represent clients in the UK when the Brexit transition period is over, currently scheduled for January 1 next year.

But no such reciprocal rights have been offered to UK attorneys at the  European Union Intellectual Property Office (EUIPO).

UK attorneys fear this will put them at a significant disadvantage to their EEA-based counterparts—both through a loss of work at the EUIPO, but also in the UK itself.

Richard Goddard, president of the UK’s  Chartered Institute of Trademark Attorneys (CITMA), says that time is running out for the government to secure reciprocal rights for UK lawyers.

“The clock is ticking,” Goddard says, adding: “We’re really concerned that the Government’s current approach risks conceding a huge advantage to European firms.”

These concerns were echoed by Kate O’Rourke, partner at  Mewburn Ellis and a CITMA past president. O’Rourke, who runs the firm’s trademark practice, says the uncertainty over future representation rights is already harming business.

“We can’t plan as a business, because we don’t know what we’ll be entitled to do in the future,” O’Rourke says.

Unfair playing field

EU firms are in the advantageous position of being able to handle all of a potential client’s work at the IPO and EUIPO in the future—companies opting for a UK firm at the IPO may now have to hire a separate firm to handle matters in the EU.

According to O’Rourke, the UK trademark profession is currently being attacked on “three fronts—we have COVID-19, EEA practitioners having the right to represent clients here, and complete uncertainty over what we’ll be able to do at the EUIPO”.

The UK government’s approach is a boon to EU firms who are already looking to poach clients and work from UK lawyers, O’Rourke claims.

Speaking to WIPR, one partner at an EU-based trademark practice, who did not want to be named, described the disparity in representation rights as a “charged and sensitive issue” among EEA and UK attorneys.

Chris McCleod, partner at  Elkington & Fife, agrees that, “as someone running a trademark practice, some action on the part of the government would be very welcome indeed”.

“EUIPO work accounts for a large proportion of UK practitioners’ work, so the government’s apparent reluctance to delay Brexit coming into effect and to restrict UK representation rights to those in the UK make it a very uncertain time,” he adds.

The UK government’s public response has been muted. Spokespeople for the Ministry of Justice (MoJ) and the IPO both told WIPR: “We are aware of the concerns around these matters and are discussing them at length with key stakeholders.”

Losing work

CITMA is in dialogue with three different government departments on the issue: the MoJ, which is leading negotiations with the EU on representation rights; International Trade; and finally Business, Energy, and Industrial Strategy (BEIS).

This process also includes “constant dialogue” with the IPO, a CITMA spokesperson says.

But Goddard says that, as another round of Brexit negotiations passes by, “we’re no further on” in finding a resolution. He says the government has to realise that its current approach will give “unfair, unbalanced and anti-competitive hand to EEA IP practitioners”.

The industry is already feeling the impact. O’Rourke says more than half of her trademark practice’s work is at the EUIPO, and the firm is investing resources in its Munich office in order “to be able to represent our clients and give them the best possible service”.

In effect, the uncertainty is causing work and economic activity to be moved from the UK to the EU. “I don’t think that was the point of Brexit,” O’Rourke says.

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