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By Peter Leung
June 24 — The U.K.'s June 23 decision to exit the European Union may make it harder for its trademark and design practitioners to maintain European practices, though some have already taken steps to work around potential obstacles.
The Brexit means that U.K.-registered trademark practitioners may lose the right to appear before the European Union Intellectual Property Office (EUIPO). That demonstrates the still-unfolding challenges that the Brexit will pose—not just for IP owners but also for practitioners.
James Fish, head of the trademarks practice at JA Kemp in London, told Bloomberg BNA that the issue involves EU Trademarks (EUTMs) and Community Designs. An EUTM is a trademark right registered at the EUIPO that has EU-wide force. Community Designs, likewise, are an EU-wide right for designs.
To appear before the EUIPO, practitioners must be with a firm or company within the European Economic Area (EEA), which includes the EU member states plus three other countries. If the U.K. does not later join the EEA as a non-EU member, then U.K. trademark and design practitioners may no longer be able to appear at the EUIPO to respond to office actions or perform other tasks.
“Under the rules as drafted, this is a major risk,” Fish said.
Because of this complication, Fish said there are U.K. trademark and design lawyers getting licenses to practice in Ireland. The Law Society of Ireland allows solicitors who are first qualified in the U.K. to obtain licenses without sitting for exams. Because Ireland is still part of the EU, these practitioners can then practice before the EUIPO.
Another way of getting around the limitation is through the Madrid Protocol, which allows trademark filers to file one application for obtaining registrations in one or more participating jurisdictions. Because the EUIPO and the U.K. are both part of the system, U.K. trademark practitioners can still file a Madrid application and then designate it as an EUTM application.
The sticking point, though, would come if an application runs into problems. Then, a U.K. practitioner would have to obtain local counsel who can appear before the EUIPO, Fish said.
For larger firms with a stronger presence in Europe, that would probably not pose much of a problem. “However, for firms that don't have sizeable EU practices, this may not work very well and that practice may fall by the wayside,” he said.
The situation for designs is a bit more complex. The U.K. has not joined the Hague System, the design equivalent of the Madrid Protocol, though it has been a part of the system by virtue of its EU membership. However, the U.K. is expected to join by the end of the year.
U.K. patent practitioners may have an easier time. The current European patent system is governed by a separate agreement, the European Patent Convention, which has both EU and non-EU members. The U.K. is expected to continue as a non-EU member, allowing its practitioners to continue appearing before the European Patent Office (30 WIPR ???, 7/1/16).
Unlike the EUTM and Community Design, a European patent does not function as a singular, pan-EU right. Instead, it is an EPO-examined patent that is individually validated by member countries of an applicant's choosing, resulting in national rights in those countries.
Attorneys with a European Patent Litigation Certificate to practice before the EPO—including U.K. practitioners—could also practice at the new Unified Patent Court (UPC), Tom Carver, a partner and patent litigator at JA Kemp in London, told Bloomberg BNA.
Although the UPC's path to ratification is now unclear, demand for U.K. patent practitioners should remain strong. Many European patents are drafted in English, meaning that many cases would likely be litigated in English at the UPC, Carver said.
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