Whilst the status of, and procedures affecting, EUTMs and other EU IP rights in a post-Brexit world are a concern for brand-owners, UK trade mark professionals face an additional headache in that there is a significant risk that their ability to represent clients before the EUIPO may shortly be lost. This is an important issue, as acting on matters before the EUIPO will account for over half of trade mark and design related revenue for many firms.

The current uncertainties

At present, UK based trade mark attorney and law firms are, of course, situated in the EU and therefore able to act before the EUIPO. However, the post-Brexit position currently remains far from clear. This uncertainty might explain why there has been relatively little comment on this area and it is apparent that different practices are taking a different approach to this problem. There are undoubtedly some ostriches with their heads in the sand and hoping for the best, others optimistic that a second referendum might keep us in the EU; but an exit, whether hard, soft, with a deal, or no deal, is a very real possibility.

There is further cause for procrastination: even if Brexit is to come, then when will it actually happen and will a softer exit give rise to further delay in a change on the representation position? If there is a no deal exit, then there is a risk that rights of representation are guillotined at the end of March 2019. If Brexit is concluded under the terms of the proposed Withdrawal Agreement then rights of representation may be extended during the “transitional period” until the end of 2020.

The ultimate shape of Brexit is also critical: if the UK departs yet remains within the European Economic Area (‘EEA’), then alongside practitioners from Iceland, Liechtenstein and Norway those in the UK should retain their rights of representation.

What brand-owners need

In short, there are a lot of ‘what ifs’, but this provides no comfort for the owners of valuable brands who need to ensure that they and their advisers are able to provide a seamless continuation of services no matter how the cookie crumbles on 29th March 2019.

The big risk is that a number of practitioners are adopting a wait and see approach. Whilst this has the attraction of not running up costs and burning management time, it has a major downside in that if the Brexit outcome runs right up to the wire and there is no, or only a very short period of continued UK representation permitted, post-March 2019 they may find themselves unable to service their client’s EUIPO needs and potentially both lose clients and risk professional indemnity claims. Even if there is a longer period of grace, the scramble for staff and agency link ups will likely result in high costs and some bad choices.

Who can act as a representative before the EUIPO?

The European Union Trade Mark Regulation (2017/1001) states at Article 120 that representation of natural or legal persons before the Office may only be undertaken by:

a) A legal practitioner qualified in one of the Member States of the EEA and having a place of business within the EEA, to the extent that he/she is entitled, within that Member State, to act as a representative in trade mark matters; or

b) Professional representatives, whose names appear on the list maintained for this purpose by the EUIPO who are a national of a Member State of the EEA, have a place of business in the EEA and are entitled to act before the IP office of a Member State of the EEA.

Re-qualifying as a lawyer in a (non-UK) EEA country

Many UK solicitors are seeking to requalify, particularly in Ireland, and it is clear that not all are fully aware that this will not by itself enable continued representation before the EUIPO. An EEA place of business will also be needed from which they can operate.

EEA office

Those firms already with an office in the EEA (but outside the UK) are in the best position. If these offices already have an IP team in place then it is very likely that the firm will be post-Brexit compliant without further action. It is more problematical where a firm has such an EEA office but does not currently service IP work; however, this should be capable of being addressed through the recruitment of local IP practitioners. Many firms face a major headache in that they sense that they should have a (non-UK) EEA presence to reassure their clients that they will remain a player post-Brexit, to manage risks and to avoid the issues outlined below in relation to an agency relationship, but are reluctant to financially commit in advance to a solution that might not ultimately be required.

Merge with an existing (non-UK) EEA practice

Whilst this should address representation concerns, the merger process is not quick and mergers are never without their own inherent risks.

Using (non-UK) EEA-based agents

Some UK firms are putting arrangements in place with firms elsewhere in the EEA to manage the situation. For some, particularly law firms where filing and prosecution might be seen as a loss leader, this may involve transferring each client’s EU work so that UK advice is provided by one firm, and EU by another. Others plan to appoint an EEA firm post-Brexit to effectively ‘post box’ their correspondence with the EUIPO under an agency arrangement. This has a number of drawbacks including how to successfully manage deadlines given the ‘last minute’ nature of many instructions, additional management requirements, data security risks, the impact on privilege and the position with professional insurance; not to mention the impact of the agent’s fees on the profitability of the work. Planning for a situation when you do not know if, when or how it will arise is no easy task. Different firms will be taking different approaches to the risk and will also have different resources available to address the situation. As Brexit approaches, trade mark practitioners should be ready to explain clearly to their brand-owner clients how they are positioned to best protect their clients’ interests, as this is a question that will understandably be of increasing concern.