Trade marks and Brexit – the WebTMS community reflects on the story so far

It is just three months since the end of the Brexit transition period and the intellectual property community is still adjusting to life outside the European Union. As the CITMA spring conference explores the post-Brexit landscape, we asked some members of the WebTMS user community of in-house and law firm trade mark attorneys, including Rachael Ward of Ward Trade Marks, to share the challenges they faced and their thoughts on the future. Overall, the picture shows an industry that worked hard across the board and has seen the benefits of that preparation.

Praise for the UK IPO

Strong communications and change management are essential in a shift of this magnitude, and pivotal to the UK’s approach was the UK Intellectual Property Office and the Chartered Institute of Trade Mark Attorneys, both of which committed huge resources to preparing for the change and lobbying to protect UK attorneys’ rights and interests as legislation was drafted. Overall, there is appreciation for how the situation was handled from the UK side, with the UK IPO in particular described as “very communicative” and more forthcoming than the EU IPO on occasion, with much of the information about the EU IPO’s stance coming via UK IPO communications.

Tools put in place by the UK IPO, such as the bulk representative change of address function, were also described as very helpful to firms handling large numbers of trade marks and registered community designs.

Pre-Brexit concerns about ensuring EU IPO representation

For both in-house and law firm attorneys, pre-Brexit concerns included ensuring they had a representative recorded at the EUIPO. As Rachael Ward of Ward Trade Marks explains: “This played out mainly in two ways. We had identified trusted partners with ongoing rights to act before the EUIPO. However, there were so many issues to consider in how we would manage not only a smooth transition but also an ongoing work relationship, to ensure that our clients were not affected in any way.”

Managing the administrative burden of new rights records

Making these changes also entailed an administrative burden, as the new EU partners had to take on all the relevant trade mark and design records and step up to make sure no deadlines were missed during the transition period. This was made easier for Ward Trade Marks as both they and their partners use WebTMS to manage records: “Using WebTMS meant that we were able to provide our new partners with schedules of all the details needed for a smooth transition, in whatever format was necessary,” says Rachael.

Using WebTMS was also an advantage when it came to creating new records for all the comparable UK Trade Marks, something that would have proved a significant burden otherwise: “The transition was completely painless for us as end users as WebTMS automatically created all the UK clones on our records and differentiated them clearly,” says Rachael. “The work behind the scenes must have been phenomenal.”

Looking ahead – challenges and opportunities on the horizon   

For many it is too early to say what the longer term challenges are likely to be for UK trade mark attorneys. However, the issue of the exhaustion of rights regime was raised, something that also cropped up in a recent IP Magazine podcast featuring CITMA’s President Richard Goddard. It is described as the main post-Brexit “question mark”. Discussion of this issue will feature in a plenary session led by Michael Silverleaf QC on the first day of the CITMA Spring conference.

Beyond this, Rachael Ward is also concerned that clients have more costs and less choice in the new environment: “our clients have to go to the expense of filing separately in the EU. We have seen increased cost for some clients already, in that they have seen two lots of renewal charges on their EU marks which fell due for renewal earlier this year, from the EUIPO and in respect of the new UK cloned right.

We have also seen loss of rights and opportunities for clients where they had oppositions based on UK rights (only), which have been dismissed. Overall, also, the interplay of UK and EU rights and the differing practices and systems involved meant that we could advise clients of different strategies that they could use in order to achieve their objectives. These have changed and there are fewer options as a result; lack of choice for clients is never a good thing.”

In-house attorneys we spoke to also feel that clearance is now trickier and that they need more budget to maintain and enforce UK/EU comparable rights.

In terms of opportunities arising from Brexit, Rachael notes that smaller companies should be able to manage their monopolies more effectively, separate from the EU, adding: “I think that watching services will be ever more important for this reason and business owners should not rely on the UKIPO to notify them of any potentially conflicting rights. Greater vigilance may lead to more conflicts and in time, more cancellation actions.”

In such an environment, these smaller organisations are strongly advised to work with expert Chartered Trade Mark Attorneys to manage their IP portfolios for them and ensure they protect and maximise their brand rights.

Catch up with us at CITMA

All the issues above and more will be up for discussion at the CITMA spring conference on 25-26 March 2021. WebTMS will be attending this virtual event and we would love to catch up with friends old and new and share how we continue to support clients post-Brexit.

Thank you to Rachael Ward and the in-house clients who kindly provided their insight and experience for this blog post.

To read more about how WebTMS helped clients prepare for Brexit, click here.