Brexit: UK lawyers concerned over EU representation and TM conversion
Lawyers have told WIPR they remain unsure over whether UK qualified practitioners will be able to represent clients before the European Union Intellectual Property Office (EUIPO) post-Brexit.
This comes after WIPR reported yesterday, July 23, that Robin Walker, a Member of Parliament and under-secretary of state for exiting the EU, announced that the UK government will convert existing EU trademarks (EUTMs) and designs for free after Brexit.
In addition, Walker said that EU unregistered designs will be protected in the UK once the Brexit process is complete.
While the industry welcomed the announcement, questions remain over other post-Brexit developments, including representation before the EUIPO.
Nick Bolter, partner at Cooley, told WIPR that for UK qualified practitioners to continue to represent clients before the EUIPO, an agreement will need to be made with the EU and legislation will need to be implemented.
However, he warned that this would be the “lowest of low priorities” for the EU and that there was “little prospect” of UK lawyers being able to represent clients at the EUIPO.
To address this issue, he said that many UK practitioners are looking at ways to mitigate the damage.
“Opening an office in a member state and dual-qualifying in a member state is something that many trademark firms and trademark practitioners have already done,” he said.
“I also expect that as this year progresses, you may see leading trademark practitioners in UK-only firms move to other firms which have existing EU27 operations,” he added.
Patricia Collis, trademark attorney at Bird & Bird, said that whether UK lawyers can continue to represent clients before the EUIPO will be down to the EU.
“Various lobbying efforts and other discussions are underway but in the meantime many law firms and individual lawyers are taking steps, such as qualifying in other EU member states (Ireland being a particular favourite) and opening offices in cities such as Brussels, Munich or Madrid,” she added.
According to Louise Popple, senior professional support lawyer in Taylor Wessing’s IP and media group, a number of UK firms that have merged or opened EU offices have cited Brexit as their main motivation in doing so.
“Ensuring that you have an office in the remaining 27 member states is key to ensuring that you'll continue to be able to represent clients before the EUIPO,” she explained. “This is particularly so if there is a ‘no deal’ Brexit.”
Automatic conversion
Popple added that it is important to remember that the automatic conversion of EUTMs and designs only applies to rights that are registered or granted before Brexit.
For applications that are still pending after the UK exits the EU, there will be a nine-month period in which a separate application can be filed in the UK without losing the original filing and priority date, she said.
“However, this is not completely satisfactory for rights holders,” she explained.
“Some applications will have been pending for years, with the applicants spending considerable time and cost trying to get them registered.”
Popple said it will be “demoralising” for those who will have to start their applications again. She explained there needs to be a mechanism in place to allow applications that have gone “far down the line” at the EU level to benefit from that at the UK level.
Roland Mallinson, chair of the Brexit task force at Marques (the association of European trademark owners), said that “we await confirmation” over the final details of the EU’s plan regarding EUTM conversions after Brexit.
“If there is a ‘no deal’ Brexit, the UK government will need to clarify where it stands on these provisional commitments,” he said. “From a brand owner's perspective, it is important that we get that clarity as soon as possible and, in particular, see these commitments honoured.”
These sentiments were echoed by Tania Clark, president of the Chartered Institute of Trade Mark Attorneys, who said there is no “cast iron guarantee” these plans will be honoured.
Clark said the government now needs to “come out and provide reassurances that in the case of ‘no deal’, it would still clone EUTMs, and registered and unregistered Community designs onto the UK register”.
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