26 March 2021TrademarksAlex Baldwin

CITMA - Brexit breakdown

Just three months have passed since the UK left the European Union Single Market and Customs Union.

“Uncertain” was the key word used to describe the post-Brexit landscape yesterday at the Chartered Institute of Trademark Attorneys (CITMA) spring conference.

Tim Moss, chief executive and comptroller general at the UK Intellectual Property Office (UKIPO) opened the conference, describing how it had successfully created more than two million rights from existing EU trademarks and designs in the lead up to Brexit.

While the dust still settles, in-house trademark lawyers are left seeking greater clarity as they continue with a ‘business-as-usual’ approach to managing their portfolios, with a few new bureaucratic challenges when dealing across borders.

To address what has changed over the past three months, CITMA invited Louise Butler, Diageo’s global head of brand production, David Llewellyn, head of trademarks at Arm, and Ese Akpogheneta, trademark counsel at British American Tobacco to the virtual stage to talk about their experiences.

‘Guessing game’

While both the EU and UK IPOs settle into a new standard of cross-border IP laws, the panel thinks it might be down to the courts to clarify trademark protection post-Brexit.

Akpogheneta said: “For the future of trademark protection will just depend on what the court cases say. It is a guessing game right now. Until we start getting decisions from the UK courts, it will be hard to say with finality that this will be the way things are going forward.

“It's a case of keeping your eyes open to the changes as they happen and implementing them into your practices.”

The panel agreed with this sentiment, with Llewellyn calling for a stronger relationship between the UK and EU IPOs.

David said: “Overall our experience has been interesting. There has been a lot of uncertainty.

“We need a real focus on getting clarity and greater communication around what everyone can or can’t do.

“Our strategy right now is to avoid as many issues as possible but we shouldn’t have to. Let's wait and see and I am sure it will get clearer.”

Butler said: “The EU and UK IPO have worked together for so long I don’t think this will be a hard divorce. Things might come back together but at the moment it is very difficult to determine what we can and can’t do.”

Business as usual

While uncertainty prevails, filing is going ahead relatively unchanged, with a few small technical hurdles. Llewellyn explained:

“Post-Brexit we are continuing to file EU trademarks in-house as we still have access to our user accounts, although at a slightly more limited capacity.

“The biggest change now is that when we file these marks, we appoint external EU representatives in case there are any issues. But our strategy is still to do as much filing as we can in-house in the UK.”

This was echoed by Akpogheneta, who said: “We might need to get an EU or EEA representative in some cases in accordance with the EUIPO but most of the time the registration process remains the same.”

Customs enforcement

One issue that has presented itself to Butler and Diageo post-Brexit is the changes in customs enforcement for goods.

“I generally do a lot of work around counterfeiting and the biggest change is that we filed all our customs recordals through the Netherlands and not the UK.

“We see a lot of counterfeit coming into the UK from the Republic of Ireland into Northern Ireland and into the UK, and I don’t think Brexit will improve this situation, if anything it is going to make it more difficult to track and detain those counterfeits.”

“One positive is that we saw the UK as a port of entry for counterfeits coming from Latin America into the rest of the EU. Brexit has changed that, the UK is not being used as a point of entry into anything anymore.”

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