CIPA urges UK to stay in EUIPO post-Brexit

The Chartered Institute of Patent Attorneys (CIPA) yesterday implored UK Prime Minister Theresa May to include the UK’s continued participation in the EU’s trademarks and designs system post-Brexit in ongoing negotiations.

In a letter to May and Brexit secretary Dominic Raab, CIPA’s president Stephen Jones requested that the UK government add the European Union Intellectual Property Office (EUIPO) to the list of EU agencies in which the UK should continue to participate after Brexit.

Brexit won’t have any effect on the existing arrangements for patents because the European Patent Office isn’t an EU institution. However, the EUIPO is an EU organisation.

The intervention is notable as CIPA is responsible for patent matters in the UK. The equivalent body for trademarks is the Chartered Institute of Trade Mark Attorneys (CITMA), which WIPR has contacted for comment.

According to Jones, the requested inclusion would avoid the government having to create new and equivalent UK trademark and design rights, with “potentially significant inconvenience and cost to businesses of all kinds”.

In March this year, the UK and EU agreed that owners of existing EU trademarks (EUTMs) and Community designs will have their rights protected in the UK after the transition period, which is due to end on December 31, 2020.

In July, statements made during a House of Commons debate confirmed that the UK government will convert existing EUTMs and designs to UK rights for free after Brexit.

Yesterday, Jones claimed that given that the Brexit White Paper (released in July) emphasises frictionless trade between the UK and the EU, the provisions for protection of trademarks and designs were of crucial importance.

The best way to ensure continuity, according to CIPA, is the UK’s continued participation in the EUIPO system, under arrangements recognising that the UK wouldn’t be a member state.

Jones said: “This will greatly benefit UK and EU businesses as well as our trading partners in the rest of the world and facilitate the commitment in the White Paper to providing the means for continuation of frictionless trade between the UK and the EU.”

In July, the UK Parliament voted in favour of the UK’s continued participation in the European Medicines Agency (EMA), which is responsible for the protection of public and animal health through medicine regulation. However, this has not yet been agreed in negotiations with the EU.

The White Paper provides for the UK becoming an active participant that contributes financially (but has no voting powers) and UK regulators acting as a “leading authority” for the assessment of new products.

But, in recent government papers, it was confirmed that the UK will fall outside of the EMA in the event of a no-deal Brexit, leaving the Medicines and Healthcare Products Regulatory Agency to take on the functions currently undertaken by the EU for medicines on the UK market.

CIPA added that while its membership is predominantly made up of chartered patent attorneys, it also has many members who are also qualified as trademark attorneys.

“We cannot speak for CITMA. But we work in a spirit of partnership with them and so had shared our letters to the Prime Minister and Brexit secretary with them and they have been 100% in support,” the spokesperson confirmed.

Tania Clark, president of CITMA, said: “We fully support the UK staying in the EUIPO system as it would be the best solution for UK and international business, as well as providing legal certainty.”  

She added that CITMA has always advocated for the UK remaining part of the European trademark and designs system as the preferred solution.

“If the UK is unable to remain in the EUIPO, the UK government’s confirmation that it will clone all EU trademarks and registered Community designs onto the UK registers is welcomed. We believe this should be done automatically and without a form,” said Clark, adding that there are some significant issues that would need to be solved such as how pending applications would be handled and exhaustion of rights.