13 October 2022TrademarksSarah Speight

CITMA: government can solve Brexit ‘unfairness’

The UK’s trademark body has written to the IP minister to help fix a system ‘clogged up’ by foreign entities. Its president explains why closing loopholes is ‘pro-growth’.

The Chartered Institute of Trade Mark Attorneys ( CITMA) has written to the UK’s newly appointed IP minister, Dean Russell MP, in a bid to tighten the country’s trademark and IP system.

Launching its campaign yesterday, October 12, the institute argues that foreign-based practitioners are clogging up the UK trademark system by taking advantage of its “loose” rules.

CITMA is urging the UK government to amend the ‘Brexit Freedoms Bill’ ( Retained EU Law [Revocation and Reform] Bill), which is currently passing through parliament.

New research commissioned by CITMA shows that, since Brexit, foreign-based attorneys/firms now account for 35% of firms in the Top 100 UK trademark filers at the UK Intellectual Property Office ( UKIPO), compared with 16% in 2019 before the UK’s departure from the European Union.

Of those foreign-based firms, some 39% now account for all UK trademark applications at the UKIPO, compared with 15% in 2019.

And the research found that a company called ‘Haiwai Consulting’—a dormant company with one director, no employees and assets of £100 in their most recent filings at the UK’s Companies House—filed 1,532 trademark applications on behalf of its ‘clients’ in just six months in 2021.

According to CITMA, IP-rich industries provide one in five jobs across the UK and contribute £770 billion to the UK’s GDP each year.

CITMA president Rachel Wilkinson-Duffy said that overseas trademark practitioners see the UK as a “registration hub of convenience because of our loose rules” which is “stifling innovation and growth in our economy and harming consumers”.

The Institute believes there are two “simple” solutions that would free UK-based innovators from the red tape caused by the problem, suggesting that trademark applicants should be appropriately regulated with suitable insurance (which is the case for any person regulated under the Legal Services Act 2007); and be an appropriately qualified professional with knowledge of the UK system.

Wilkinson-Duffy, who is also a partner in the IP Department of Baker McKenzie, tells WIPR more about CITMA’s plans.

Could you tell us more about CITMA’s campaign?

Since Brexit, an imbalance has opened up whereby foreign representatives can appear before the UKIPO with very little connection to our system—yet our practitioners cannot appear in key jurisdictions such as the EUIPO.

Not only is this unfair, but it has real implications for our system because these overseas and unregulated representatives clog it up as a result of being unfamiliar with our rules and processes.

Just at a time when we need to help our innovators to protect their IP and grow the economy, we should be making our IP and trademark system more efficient and effective by requiring that if you wish to represent someone other than yourself before the UKIPO, you be appropriately regulated and qualified.

Why has there been a rise in the number of foreign-based firms registering trademarks in the UK?

In part, it is because our system is world-class. We celebrate that, which is why we must protect and strengthen it. But another driver is the consequence of Brexit, which has seen our practitioners lose the right to appear in the EU; meantime, we have kept our system open to overseas practitioners without considering the impact.

What are the gaps in UK trademark legislation, and how can they be remedied?

The gap is the emergence of this loophole, where we allow foreign practitioners with little-to-no connection to the UK to use our system, despite overseas jurisdictions such as the EU and USA having much tighter rules.

We are calling on the government to amend our rules to keep them in line with those other key markets.

The Retained EU Law (Revocation and Reform) Bill is designed to help UK businesses post-Brexit; fixing this loophole falls cleanly within the spirit of that Bill and we are calling on the government to amend it to allow our UK practitioners and innovators to get on with what they do best.

How do you plan to influence the government?

Today we have written to the new minister with responsibility for intellectual property, inviting him to work with us to make these changes through the Bill currently making its way through parliament. We look forward to working with him to do so.

In addition to his responsibilities for intellectual property, Mr Russell is also the government’s lead for Brexit opportunities—so the intent of our campaign falls squarely within his portfolio and the policy agenda of this pro-growth government.

What are CITMA's other priorities right now?

We will continue to passionately represent and promote the interests of the membership and the wider profession on this issue and across many other matters.

We want to equip, support and develop our members to be competitive and successful both nationally and internationally. Inspiring a positive, healthy and inclusive culture is another big part of what we are striving for.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox.

Today’s top stories

Breaking the mould: Julius Stobbs on authenticity

South Korean smartphone company named in wide-ranging USITC probe

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk

More on this story

26 March 2021   Just three months have passed since the UK left the European Union Single Market and Customs Union.