Much Ado About Nothing
We have used this title before. Please forgive our lack of originality.
For a long time, a source of tension among UK trade mark and design attorneys was the fact that the UK was one of the few EU member states to abide by a decision to allow attorneys from any European Economic Area country to represent clients in proceedings before any national office of an EU member state. With this in mind, one of the ironies of Brexit is that, from 1st January 2021, UK trade mark and design attorneys will (in general – please see below for a super-important exception!) lose the right to represent clients before the EU IPO. From this date, they will not be allowed to undertake any new work, and they will only be allowed to see to a conclusion cases that they are already handling as of 31st December 2020.
In contrast, the UK IPO had intended to continue to allow trade mark and design attorneys from any European Economic Area country to represent clients in UK matters. Oh yes, and UK attorneys would be allowed too. But, in what is the intellectual property profession’s equivalent of a wraggle over fishing rights in British waters, the might of the UK’s IP lobby has prevailed and the British Government has announced that the rules will be changing. Well, they will if Parliamentary time can be found to pass the necessary legislation before the end of the year……
From 1st January, a UK or Channel Islands address will be needed in all proceedings before the UK IPO. These rules will apply to new applications, new oppositions and other proceedings, and they will apply to UK trade marks, designs and patents. (Patents are not otherwise greatly affected by Brexit because there is no EU patent system – the European Patent Convention is nothing to do with the EU and the UK is remaining a member of it). A UK address for service will not be required for the renewal of existing registered or granted rights. Furthermore, a UK address for service will not be needed until 31st December 2023 for UK clones of EU trade mark registrations and design registrations. This is enshrined in the UK's Withdrawal Agreement with the EU. (Yes, the one, Prime Minister, Boris Johnson, tried to lose in his shredder).
We know we keep harping on about it, but, in Wynne-Jones, our trade mark and design attorneys are able to continue representing clients before both the EU IPO and the UK IPO. This is because of AIPEX, our European operation, which is based in the Netherlands. This saves the need to have UK attorneys who are different from your EU attorneys. This, in turn, means lower costs, less admin, and a more joined up approach.
We have used this title before. Please forgive our lack of originality. But, for us, it’s true.