Brexit: Our path to protecting the profession

14th May 2020

We take you through the timeline of our work to keep IP at the forefront of Brexit planning.

Ever since the EU referendum result was announced in June 2016, we have taken a lead on developing options and solutions for the future of IP in the UK. It has been a long process – and we have been there every step of the way, engaging with the people that matter to fight for the best possible outcome.

Vital preparation

“In the run-up to the referendum, we were ready for either remain or leave winning,” recalls Keven Bader, CITMA’s Chief Executive. “We had full statements prepared, ready to send to the media whichever outcome prevailed. We didn’t think we’d need the leave one, but I was glad we had both covered.

“We made sure that we were ready to act and build a campaign to ensure we were fighting for the best outcome from Brexit for our members and business.”

As it happened, our leave statement detailed that we wanted to “ensure the best possible outcome for members, owners of intellectual property rights and practitioners in the UK”.

We also called on the UK Government to ensure rights of representation and a simple and cost-effective transition for the continued protection of EU IP rights in the UK. A pre-referendum briefing was sent to members in March 2016, so we had already scoped out what we could expect if the leave outcome came to pass. 

Scenario planning

Our Brexit task force first met on 12th July. It was made up of a range of senior trade mark professionals from across the sector.

We wanted to ensure our next steps were as practical as possible, and we knew we had to work quickly to help set the agenda for what was to come over the years ahead.

The task force came up with seven possible scenarios – all with pros and cons mapped out. Importantly, we agreed that we favoured “an outcome which minimises the cost and resource burden to business while maximising legal certainty”.

We presented this thinking to the Minister for IP at a meeting in July and shared it with the UK IPO, EUIPO and other stakeholders.

Spreading our message

It was important to share the message that it was “business as usual” in the UK and that we were actively involved in discussions to ensure the best outcome. A ‘TECH Summit’ offered an opportunity to do so in India. There, CITMA President Kate O’Rourke joined Jo Johnson on a panel to discuss IP rights in a globalised world. We also spoke at the Global IP Summit in Brussels in December.

Refining our scenarios

By now, our seven scenarios had become the benchmark for how EU trade marks and registered community designs should be handled in the UK post-Brexit. We had detailed discussions on them with the UK IPO, who showed interest.

From our discussions with members, the UK IPO and other stakeholders, two models emerged as the preferred scenarios: ‘Tuvalu’ and ‘Montenegro’. These scenarios were updated to provide a greater level of detail and to revisit the pros and cons.

Meeting IP Minister

As Prime Minister Theresa May’s letter to Brussels officially triggered the exit process (with an expected UK leave date of 29th March 2019), we had a range of important meetings with Jo Johnson, by then the Minister for IP, on registered and unregistered rights post-Brexit. We brought up the desirability of mutual recognition of professional qualifications, with possible loss of earnings for IP professionals catching the Minister’s interest.

We also presented and discussed our updated thinking on the ‘Montenegro’ and ‘Tuvalu’ models with the UK IPO and shared some of the concerns and considerations that the UK IPO should take into account when formulating the planned way forward for the continued protection of EU IP rights in the UK.

International opportunities

Taking our message around Europe and the world, we attended and spoke at the World IP Forum in Bangalore, the CNIPA Conference in Munich and ECTA in Budapest, among many others. We also welcomed a delegation to the UK from IPIC, Canada.

Meeting with the European Commission

We took our scenarios to Brussels and met François Arbault, part of the EU’s Brexit negotiation team. Kate O’Rourke and Tania Clark met with Mr Arbault, who was joined by IP specialists including Thomás Eichenberg, who had worked on the most recent EU trade mark regulation. Also attending were representatives from INTA, Business Europe, AIM, MARQUES, APRAM, and UNION-IP. 

“The Commission officials were very well briefed and delved into detail about a number of items, including rights of representation, exhaustion of rights, enforcement and goods in transit – all of which we were able to input on,” said Kate.

Making the case for Montenegro

To make our arguments on rights of representation and registered rights clear, we published our official position paper. It offered solutions that would set the tone for our future work and provided a clear steer to the UK Government and other stakeholders as to what the trade mark legal profession was calling for.

We set out why UK Chartered Trade Mark Attorneys being granted continuation of rights of representation at the EUIPO would benefit business and ensure the continued strength of the UK IP professions.

On registered rights, we argued that our ‘Montenegro’ model would be the most practical solution if the UK was not going to continue as part of the EUTM and RCD systems. The ‘Montenegro’ model would see automatic entry of all EUTMs and RCDs onto the UK IPO register with the same scope of protection, registration date and, where applicable, priority and seniority as the existing EU registration.

We also set out our view on a number of issues that would affect registered rights, including intent to use, seniority and pending applications.

We had the opportunity to share our latest thinking with business at the Institute of Directors’ Brexit Seminar, with Kate O’Rourke speaking to an engaged audience that included business leaders and government officials.

International outreach continues

The diaries of our officers were packed with engagements across Europe as we continued to attend meetings and speak at key events in the IP calendar, including the APRAM Conference in Paris, the UK-China IP Symposium, GRUR in Hamburg and BMM in Brussels and Rotterdam.

DIT discussion

The future relationship between the UK and EU will in large part be down to future trade negotiations. Our engagement with the Department for International Trade (DIT) has played an important part in ensuring our message reached all the areas of Government it needed to.

November 2017 
A united voice

We, along with the Law Society, the Intellectual Property Bar Association, the IP Federation and CIPA, wrote a joint letter to the Lord Chancellor’s Brexit Law Committee. It outlined key considerations and recommendations that the UK Government must consider in relation to intellectual property following the UK’s exit from the EU. We again showed a united voice across the IP legal profession.

December 2017
Establishing evidence 

To make our argument politically for the views and solutions proposed in our position paper, we needed to build an evidence base to take our argument to those who could influence the outcome.

We enlisted the help of public affairs agency Freshwater to put together a business case to take to MPs, the UK IPO and other key stakeholders. With the assistance of an economist, we brought together a compelling set of statistics to build our narrative around.

We found that UK Chartered Trade Mark Attorneys represented a quarter of all EUTMs and over half of all trade marks held by US-based entities. We estimated that the financial cost of losing this work would be in excess of £789m, including the knock-on impact.

We set out our six key messages for the UK Government:

1. The cost to UK businesses could be hugely significant, as they look to make sure their products and services are still protected through registration in the EU. The Government needs to confirm the continuation of registered protection.
2. CTMAs losing the right to represent clients at the EUIPO would have a significant negative effect on the industry, as well as on the wider business community as a whole, resulting in a contraction of the profession and increased costs to UK plc.
3. CTMAs lead the world in representing non-EU organisations at the EUIPO, particularly firms from the US. These vital commercial relationships are seriously endangered by ongoing uncertainty and the potential future loss of rights of representation.
4. The businesses within the CTMA profession not only stand to lose a significant amount of income from filing fees, but also from associated income linked to their work with EUTMs and RCDs.
5. The UK Government must act to make sure that CTMAs retain their current EUIPO rights of representation post-Brexit.
6. The UK Government must provide certainty on its commitment to the UK’s trade mark and wider legal and IP sectors to mitigate the loss of business to EU-based competitors before Brexit takes place.

Taking our case to MPs

Members contacted some 100 MPs to outline our evidence. This led to a number of follow-up meetings between members and their MPs to discuss the future of IP post-Brexit, including meetings with Hilary Benn, then Chair of the Exiting the European Union Committee, Anna Soubry and Bill Esterson, then Shadow Minister for IP.

We also met with two members of the All-Party Parliamentary Group for IP: Baroness Neville-Rolfe and Lord Clement-Jones. Several MPs subsequently asked parliamentary questions on our behalf, which all received responses from ministers.

UK aims for Montenegro model

The UK Government confirmed that it would pursue a version of our ‘Montenegro’ model and grant all holders of EU trade marks and registered community designs an equivalent UK right upon Brexit. This long-awaited confirmation was timely, as we had meetings with senior UK IPO officials and with the then Minister for IP, Sam Gyimah, in the following two weeks.

We also joined forces with a number of European IP organisations to issue a joint statement to the European Commission following the publication of its draft Withdrawal Agreement and the ongoing negotiations between the EU and UK. The statement, signed by AIM, APRAM, BMM, CITMA, ECTA, INTA and MARQUES, set out proposed solutions to some of the issues posed by IP post-Brexit. These included registered rights, exhaustion, the use requirement and rights of representation.

CITMA President Kate O’Rourke said: “It was important to show there is agreement across a number of organisations on the solutions to how IP should be handled post-Brexit.”

APPG evidence

Using data gathered for our business case, we submitted evidence to the All-Party Parliamentary Group (APPG) on Legal and Constitutional Affairs’ inquiry on the effect of Brexit on the provision of legal services. We outlined the impact on the CTMA profession if rights of representation before the EUIPO were lost. It was another opportunity to reiterate our desired outcome from the ongoing negotiations between the UK and EU.

Acting on Article 55

We set out the disadvantages of the approach set out in Article 55 of the European Commission’s draft Withdrawal Agreement. The statement, sent to the European Commission, was signed by ourselves, BMM, FICPI-UK, the IP Federation, MARQUES and the Law Society.

Our evidence goes to Parliament 

The EU Justice Sub-Committee received a range of evidence from Daniel Alexander QC and Charlotte May. Our business case and evidence submitted to the APPG on Legal and Constitutional Affairs formed part of the evidence heard.

New withdrawal agreement

This continues to assert that owners of registered EUTMs and RCDs will have their rights cloned onto the UK register to ensure continued protection. UK CTMAs would maintain rights of representation for ongoing proceedings at the EUIPO.

Feeding into SIs

The draft intellectual property statutory instruments (SIs) for implementing the Brexit changes were published. These would bring the legal updates required for Brexit into UK law. CITMA representatives had the opportunity to provide input into the draft SIs.

No-deal preparations

The UK was due to exit on 29th March, and with Parliament in a deadlock, we prepared for the UK to leave without a deal and the implications of falling off this ‘cliff edge’. We updated our guidance on what would happen in ‘deal’ and ‘no-deal’ scenarios in relation to professional representation and IP rights.

US trip

We took our key messages to the US in a series of roadshows with CIPA and the UK IPO. These allowed us to reassure the key US market that the UK was operating as normal and that the profession would still be able to carry out work post-Brexit.

Seeking guidance

With confirmation by now of a further extension to the Brexit process (until 31st October 2019), we sought guidance for the UK profession from the EUIPO on exemptions and requirements to remain on the register of representatives. This followed our attendance at the EUIPO user group meeting in Alicante the previous month.

The EUIPO set out the evidence required to prove “real and effective establishment” in an EEA Member State, changing from a professional representative to legal practitioner and applying for exemptions as a UK national. The guidance also covered changing from a professional representative to a legal practitioner and applying for exemptions as a UK national.

July 2019 
No let-up

The arrival of Boris Johnson as Prime Minister signalled with some certainty that the UK would be leaving the EU within the next 12 months. As such, we focused our attention on continuing our fight for rights of representation.

WIPO guidance

We met with the WIPO in Geneva to discuss no-deal preparations and shared the WIPO’s guidance with members.

Problem solving

Members were informing us that requests for a second EUIPO ID were being rejected in many cases. We took this up with the EUIPO, which issued additional guidance to help the UK profession understand the process and what was needed for a successful application.

Negotiating positions

Following the UK’s departure from the EU on 31st January 2020 and the start of the transition period, the UK Government set out its negotiating position on IP by saying that it was “open to co-operation with the EU on intellectual property” and “seeking to ensure high standards of protection for trade marks and designs”.

The UK Government said that it seeks an agreement that “secures mutual assurances to provide high standards of protection for IP rights, including registered IP rights such as patents, trade marks or designs”.

The document goes on to state that the UK is “open to discussing mechanisms for co-operation and exchange of information on IP issues of mutual interest”.

We met with the Minister for IP, Chris Skidmore, shortly before he left the position, and reiterated the importance of the UK IP profession retaining rights of representation before the EUIPO.

Our next steps

With the transition period drawing to a close at the end of this year, the coming months will be vital. We are still prioritising rights of representation for UK CTMAs before the EUIPO. We are also fighting for reciprocity on address for service between the UK and EU. We will keep you up to date as we strive to get the best outcome.

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