Trade Mark protection in the UK after Brexit

During November, position papers were coming thick and fast from IP organisations on Brexit. Mostly they are very

demanding and expect the UK's final deal to cover detailed issues on intellectual property. Such provisions will come, but they are unlikely to reach the priority these organisations expect. The EU IPO seem to think so too. They have also issued a paper (or at least the European Commission has done so on their behalf) which, to me, reads as a very strong message that it is brand owners responsibility to look after themselves.  Here are the papers:

• Chartered Institute of Trade Mark Attrorneys (UK body- CITMA) 20 pages
• INTA (International brand owners- US based) 9 pages
• Marques (brand owners - UK based) 9 pages
• European Commission  countersigned by the EU IPO (registrar) 2 pages 1 December 2017

All of these demands and comments were made before the phase 1 deal was reached on the night of Thursday 7/Friday 8 December 2017.

Our minister with responsibility for Intellectual Property  is Jo Johnson, brother of the greater Bo, was very pleased about the deal in respect of the Universities - his main responsibility  - as it seems UK academic institutions can continue to participate until 2020 in EU research projects to freely disseminate UK IP into Europe.

Good news 4 science: 1. UK participants in existing projects guaranteed EU funding. 2. Projects approved to continue, with uninterrupted EU funding. 3. UK based orgs & people can bid for H2020 funding, participate in & lead consortia, post-exit, in '19+'20https://t.co/veLAEabQOL

— Jo Johnson (@JoJohnsonUK) December 8, 2017

No reply yet as to whether UK representatives at EU IPO have the like freedom to continue as representatives while we pay to continue our support for our European neighbours.

There is a substantial amount of EU IPO business with UK legal firms that do not have European subsidiaries to take it on, that is available for transfer.  CITMA members have already commented on their clients being poached, but has anyone received a business proposition? Brexit will happen. It would be nice to know there are responsible representatives offering to provide an orderly transition for brand owners based outside the Euro27. If you are one such, do ask those making unsolicited approaches how they will work with your current representative and how they will reimburse them.

ACID stands up for the UK profession

One of the greatest supporters of the UK creative sector is Dids Macdonald and the Anti Copying In Design Group ACID which she masterminds. I frequently suggest to my creative clients that they become members as they start their business journey. I notice on twitter that Dids was concerned that Brexit meant the loss to UK designers of Community Unregistered Design Right - not something that is much enforced. In the UK our own unregistered design right has a far longer duration but it obviously does not give you free rights beyond the English channel.

As I have previously discussed many design clients are generally unwilling to pay for even great value legal support.

Cath Kidston's registered Design DM/093635-12

The real loss to those UK based designers is the ability to register a Community Registered Design without legal representation. Post Brexit they will need to work with a representative. This can't be a local UK one unless some deal is done. Its hardly likely that a deal will be done to allow UK representative to act before the EU IPO. Its not going to be a high priority for the UK government in the negotiation due to the low value of existing business to the UK legal profession that will be lost.

However the UK government is committed to joining the Hague System. At present a UK designer can access Hague as an EU citizen because the EU is a contracting party. Not that many do as you can see from the Hague Express Database which reveals only 3 designs with GB addresses registered so far in 2017. However post the UK accession to Hague it will become a great deal more attractive. With a single application you can have a UK registered design and a Community Registered Design and if you wish ask for protection in any of the other territories which are Hague Contracting parties Switzerland Norway and Turkey are the useful European contracting parties. US and Japan are the most likely to be of economic value to British designers.

Therefore my free advice to British creatives is that registration via Hague is your best route to protection beyond these shores. Cath Kidston thinks registration may be useful but her highly creative company is choosing to register the type of textile fabric design that is the simplest to represent as shown above. The Cath Kidston business will also have copyright in that design but  no doubt appreciates that the proof of copying element of a copyright case can be onerous.

Planning for Brexit for our UK clients is something we should now be considering. Using Hague is just one proposal. In future posts I would like to consider what is the best advice for our UK clients to prepare their IP portfolios. It seems we can rely on CIPA and CITMA to do the best they can for our overseas clients.

Voting Day

We have European weather from France today. This will probably result in an even lower turnout in the referendum in the south-east though I understand the weather is better further away from the continent.

In the hopefully unlikely event that you hear tomorrow morning that the vote has gone the wrong way (leave), the message is definitely KEEP CALM AND CARRY ON. Although the UK will apply to leave the European Union there will be a prolonged negotiation period and then we will fall out ignominiously after 2 years. Maybe even by then some other countries will have made choices too.

As regards the effect of European Union trade marks in the UK after that, this will fall to be decided under UK law. I think it is probable that either they will be granted automatic protection as UK national marks or there will be a transitional period within which they can be converted. Many UK businesses have only European Union trade marks (although generally I have always encouraged my clients to have solid protection at home first before looking overseas, though the low cost of European Union trademarks has meant that some businesses do not follow that advice and prefer 28 for the price of one) and therefore there is very little likelihood that the UK government will decide that European Union trademarks are no longer effective.

It's never a bad idea for any clients in doubt to have a UK trademark but that's an extra level of security for brands that feel they don't want any uncertainty about their protection in the UK.

As you will be aware, proving use of European Union trademarks has become more hazardous of late. However, I did have a recent decision from the EUIPO which explicitly said they weren't following the UK community trademark court in deciding that even significant use on the UK market without any export trade is not sufficient to maintain an EU trademark. That will be a relief to many but it is only a first instance decision and there is some way to go before we have complete clarity about exactly how much local use will keep an EU trademark alive.

My prediction is that the turnout will be below 40% and that the remain vote will be over 60% of the votes cast but only just. Tomorrow you can rate me as a pollster!

Today 23 June 2016 is also the Feast of St Etheldreda - an event being marked this afternoon in Ely Place with a Strawberry Fayre, catered by the Bleeding Heart. In truly British fashion, in case of rain, you can drink your Pimms and eat strawberries in the Crypt of the church

God Bless England and may she continue to sail within Europe! 

Preparing for 23 March and the European Union Trade Mark

This name will disappear on 23 March 2016 so are we ready for the change? The page that the soon to be European Union Intellectual Property Office has created is here.

Although there is a new Harmonisation Directive the approach taken for our favourite CTMR 207/2009 is that it is amended so we need a consolidated version. I haven't found one yet. Will we still call it CTMR for old time's sake?

The simple things we need to do is change the name of OHIM  which becomes European Union Intellectual Property Office and community trade mark becomes European Union trade mark. What is the consensus for the abbreviations: EU IPO and EU TM is my choice. European Union TM is officially sanctioned in Art 1(2) of the amending regulation.

Not much will change about day to day filing except that you will have to decide whether you want to receive the search of earlier rights on the Community Trade Mark Register Register of EU Trade Marks . This is now known as an EU search report but it still only covers EU TMs. You can say you don't want it but they have to create it even if you don't want it because they are still sending out those pesky surveillance notices. We are now allowed to opt out of receiving them though and I shall be looking at how to do that, especially where I am the representative for one and two letter logos.

Graphic representation is now (well with effect from 1 October 2017 and we can expect the EU IPO to tell us what representations are acceptable)  not essential and there is plenty of hot air about the possibilities of registering non-traditional EU TMs. Forget it. They also amended Art 7(1)e so you cannot register:

‘(e) signs which consist exclusively of:
(i) the shape, or another characteristic, which results from the nature of the goods themselves;
(ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii) the shape, or another characteristic, which gives substantial value to the goods;’

Now Arnold J had a go at the Taxi CTM not long back and at paragraph 215 of his judgement killed it under  the substantial value provision. The same has to be the case for the smell of perfumes. Even if the representation is not graphic it is still required to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. I don't know of any self-contained sound representations. Even a recording needs something to play it and the sound file also needs to be easily accessible and durable - quite a challenge. My best advice is stick with registration for traditional marks.

The amendments allow for Certification EU TMs but these points of the Regulation will not apply until 1 October 2017 so we have more time to prepare for those.

We have already seen the benefit of the reduced renewal fees when renewing EU TMs that were due to expire after 23 March.

Thinking of Brexit, the provisions on representation  Art 93(1)b now simply says

(b) professional representatives whose names appear on the list maintained for this purpose by the Office.

If UK representatives are on that list they will still be there after Brexit so the old campaigners should be able to continue to represent. The requirement for representation is also amended so that it is only applicants outside the European Economic Area who need representation as opposed to outside the Community. Its possible, but uncertain, that the UK will stay in the Economic Area. This is the area for free movement of people and that is a big issue for many LEAVE voters who might feel betrayed if we stayed in the EEA and were simply told what to do by Brussels without any say in the negotiations.

A lot more of  the changes are less likely to affect our daily lives, but there are a lot of them so we might be surprised.