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Post-Brexit protection of intellectual property rights: trade marks, designs and rights of representation

As Brexit negotiations gather momentum the list of issues to be discussed and resolved seems limitless. Intellectual property is no exception. In an attempt to provide more certainty, both The Chartered Institute of Trade Mark Attorneys (CITMA) and the European (EU) Commission have published papers setting out their position to help support the on-going negotiations in relation to trade marks, designs and rights of representation.

Adamson Jones patent and trade mark attorney, David Gwilliam summarises the key principles and emphasises the need for clarity around post-Brexit protection of intellectual property rights.

The current situation
Currently, if you wish to register a trade mark for protection across the EU, only one application is filed. However, the uncertainty around post-Brexit has resulted in a sense of panic around trade mark and design protection in the UK, resulting in a raft of potentially unnecessary filings of separate applications for EU and UK protection.

The current view is that the protection for existing registered EU trademarks and designs in the UK will be retained after Brexit. It is the detail around the process of ensuring continued UK protection for existing EU right holders that is still to be worked out.

Patent protection is a separate issue because the European Patent Convention is outside of EU law and the UK will continue to be a member state of the European Patent Organisation post-Brexit.

CITMA’s position
The CITMA paper, published in July 2017, sets out their over-arching recommendation that whatever happens post-Brexit “It is vital that the UK retains strong trade mark and design systems post-Brexit, and that the cost and disruption to owners of existing EU trade mark and design rights is minimised.”

They recommend:
• Existing EU registered trade marks and designs continue to have the same scope of protection in the UK.
• UK Chartered Trade Mark Attorneys continue to be able to represent their clients before the European Intellectual Property Office (EUIPO).
• UK Chartered Trade Mark Attorneys be granted rights of representation at the EU General Court (EGC) and the Court of Justice of the European Union (CJEU).

CITMA are keen to emphasise that it is vital that businesses should not experience a loss of protection and that both the time and monetary costs involved in doing so, will be kept to a minimum. They believe that the most logical way of doing this would be “to ensure the UK continues to be part of the current system and IP practitioners retain existing rights of representation.” However, this solution may not be politically acceptable as it would appear to result in trade mark protection in the United Kingdom continuing to be subject to EU jurisdiction following Brexit.

If the UK is unable to continue to be part of the current system, CITMA’s alternative suggestion is that all existing registered EU trade marks and designs should automatically be entered onto the Intellectual Property Office’s register with the same level of protection as the existing EU regulation at zero or minimal cost.

The EU Commission paper, published in September, reinforces CITMA’s opinion around ensuring continued protection.

The EU Commission paper
The EU Commission Paper sets out the EU’s position on post-Brexit intellectual property rights, to be presented to the UK in the context of the Article 50 negotiations.

The EU Commission states that EU trade marks and designs granted before Brexit should continue to be given protection within the UK, at no financial cost to the rights holder.

They also recommend that upon exiting the EU, the UK should put in place the necessary legislation to ensure that those rights that are subject to geographical indications and protected designations of origin are sufficiently protected.

The paper also covers priority benefits for submitted applications, supplementary protection certificates, databases and the exhaustion of rights and states that these benefits should continue to be applicable post-exit.

The need for clarity
It’s encouraging that both bodies appear to be in agreement regarding ensuring continued protection of trademarks and designs. This unity increases the likelihood that this will be the case post-Brexit. However, the lack of clarity around the specifics such as the administration and associated costs is increasingly frustrating.

There are also certain situations that need to be carefully considered, specifically those applications that are still going through the application process or are the subject of ongoing opposition proceedings with the EUIPO at the time of Brexit. A small minority of cases are likely to be highly complex and at the moment there is no indication as to how these cases will be managed and resolved. It’s important that this is considered and the necessary guidelines provided.

CITMA recommends that UK attorneys continue to be able to represent their clients before EUIPO and are also granted rights of representation at the EGC and the Court of Justice of CJEU. This would be beneficial for UK trade mark holders as their UK representatives would be able to continue obtain protection throughout the EU without the need to incur the additional cost of appointing an additional representative based in the EU. However, this would also appear to give UK attorneys an advantage over their EU counterparts who may not be able to represent their EU clients in the UK. It’s interesting to note, that unlike the CITMA paper, the EU Commission paper makes no reference to representation rights.

Don’t panic
Although there is an obvious need for more detail and clarity around the specific administration and costs of retaining protection – along with guidance around more complex cases and rights of representation – in the main there is no need to panic. Every indication to date is that it will be possible to retain protection of existing registered EU trademarks and designs in the UK post-Brexit, it’s just likely that working out the detail may take some time.

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