10 JUIN 2020
On 31 January 2020, the United Kingdom officially left the European Union, thus opening a transition period that will end in December 2020. In this troubled time of pandemic, negotiations to find an agreement resumed on Monday 20 April 2020. The UK has indicated that it will not accept an extension of the transition period.
Regarding the negotiations concerning the UK’s exit from the EU (hereinafter “Brexit”), we have conducted an overall reflection on the representation rights of UK attorneys before EUIPO.
The Chartered Institute of Trade Mark Attorneys (CITMA) requests that UK representatives should be able to continue to be representatives before EUIPO in ongoing and pre-existing proceedings for at least 3 years after Brexit, as a transitional period. However, concerning the right of representation of UK attorneys before the EUIPO, the representation of natural or legal persons before the Office may only be undertaken by a legal practitioner (i) qualified in one of the Member States of the European Economic Area (EEA) and (ii) having his place of business
within the EEA.
We consider that (i) after the withdrawal of the United Kingdom from the EU, the only way for United Kingdom attorneys to be eligible to act before the EUIPO would be if the UK remains in the EEA; (ii) if the UK does not remain in the EEA after the Brexit, UK attorneys should not be able to represent their clients before the EUIPO; (iii) due to the simple mechanism required to name a representative, a transitional period is not required.
Giving permission to UK attorneys to represent before the EUIPO after the Brexit: (i) would lead to a breach of equality between European professionals; (ii) would represent an important loss of business for attorneys in the other EU countries. Furthermore, (iii) if the UK is no longer a member of the EEA, the UK should not continue to take advantage of this system; and (iv) there would be no political justification for giving this privilege to the UK.
For the sake of clarity, it seems appropriate to specify that the same provisions should apply to all pending proceedings which require professional representation, such as oppositions, appeals before the Boards of Appeal, revocation and invalidity proceedings, as well as actions before the General Court or the Court of Justice.
However, in pending proceedings for which professional representation is not strictly necessary, because they are coming to an end and do not include any further procedural activity, notifications could be made by the EUIPO directly to the trademark or design owners.
Aware that the UK representatives will not be able to practice before EUIPO anymore but that EEA representatives will still be able to practice before the UK intellectual property office (IPO), CITMA and UK IPO asked the UK government to restrict EEA address for service at UK IPO, requiring a UK address for service, for existing and new rights. This request should not be an obstacle or a threat to European representatives.
1. Legal background
1.1 The right to represent before EUIPO
The right to represent before EUIPO for EUTMs is provided for by Article 120 of EUTMR (2017/1001), stating the following:
Article 120. Professional representatives
“2) Any natural person who fulfils the following conditions may be entered on the list of professional representatives:
(a) being a national of one of the Member States of the European Economic Area;
(b) having his place of business or employment in the European Economic Area;
(c) being entitled to represent natural or legal persons in trade mark matters before the Benelux Office for Intellectual Property or before the central industrial property office of a Member State of the European Economic Area. Where, in the State concerned, the entitlement is not conditional upon the requirement of special professional qualifications, persons applying to be entered on the list who act in trade mark matters before the Benelux Office for Intellectual Property or those central industrial property offices shall have habitually so acted for at least five years. However, persons whose professional qualification to represent natural or legal persons in trade mark matters before the Benelux Office for Intellectual Property or those central industrial property offices is officially recognised in accordance with the regulations laid down by the State concerned shall not be required to have exercised the profession.”
The right to represent before EUIPO for RCDs is provided for by article 78(4) as of CDR (no.6/2002):
Article 78. Professional representation
“4) Any natural person may be entered on the special list of professional representatives in design matters, if he fulfils the following conditions:
(a) he must be a national of one of the Member States;
(b) he must have his place of business or employment in the Community;
(c) he must be entitled to represent natural or legal persons in design matters before the central industrial property office of a Member State or before the Benelux Design Office. Where, in that State, the entitlement to represent in design matters is not conditional upon the requirement of special professional qualifications, persons applying to be entered on the list must have habitually acted in design matters before the central industrial property office of the said State for at least five years. However, persons whose professional qualification to represent natural or legal persons in design matters before the central industrial property office of one of the Member States is officially recognised in accordance with the regulations laid by such State shall not be subject to the condition of having exercised the profession.”
1.2 The right to represent according to the Office guidelines
According to the EUIPO Office Guidelines (Part A, Sector 5, 2.3), a representative who is entered on the Office’s list of professional representatives according to Article 120(1)(b), (EUTMs), is automatically entitled to represent also in design matters (Article 78(1)(b) CDR)).
The list of representatives for design matters is intended for those representatives that can only represent in design matters but not in trademark matters.
According to paragraph 2.3 of Part A, Section 5 of the Guidelines, in order to represent before the EUIPO in trade mark matters three requirements are to be fulfilled:
(d) The representative must be a national of one Member State of the EEA.
(e) The representative must have its place of business within the EEA.
(f) The representative must be entitled under national law to represent third parties in trade mark matters before the national industrial property office at a Member State of the EEA.”
2. Representation in ongoing proceedings before the European Union Intellectual Property Office in the Withdrawal agreement CITMA, as well as the UK IPO, are very concerned that UK representatives are not able to practice before the EUIPO and avail themselves of Article 97 of the Withdrawal Agreement.
This article 97 “Representation in ongoing proceedings before the European Union Intellectual Property Office” relates to the right of UK representatives, who were representatives in a procedure before EUIPO before the end of the transition period, to continue to represent in that procedure.
According to this article :
“Where, before the end of the transition period, a person who is authorised to represent a natural or legal person before the European Union Intellectual Property Office in accordance with Union law was representing a party in a procedure brought before that Office, that representative may continue to represent that party in that procedure. This right shall apply to all stages of the procedure before that Office.
When representing a party before the European Union Intellectual Property Office in the proceedings referred to in the first subparagraph, such representative shall in every respect be treated as a professional representative authorised to represent a natural or legal person before the European Union Intellectual Property Office in accordance with Union law.”
The interpretation of this clause which provides for UK representatives to continue to be entitled to act before the EUIPO in ongoing proceedings, should be restrictive: if the representative was in a EUTM application, the procedure (application) will expire with a decision on the application (registration or refusal). In case of need to file an appeal, this would be a new procedure and the UK representative should not be entitled to be the representative in this case. The intention of this article is to ensure continuity and legal certainty to applicants represented by UK representatives to have time to find a new EU representative after Brexit and not to perpetuate the right of UK representatives to represent before EUIPO after Brexit.
3. Consideration of British representatives after Brexit
Due to this legal background, as from Brexit, if the United Kingdom does not remain in the EEA,
British representatives who are not nationals of a Member State of the EEA, and/or have a place of business within a member country of the EEA, and/or are entitled to represent on trade mark and design matters before a national office of a Member State of the EEA, will not be entitled to be on the list of professional representatives before EUIPO.
3.1 The immediate effect of Brexit concerning representation before EUIPO
A transitional period of three years after Brexit has been suggested, during which British representatives could continue to represent before EUIPO.
We underline that the substitution of a representative before the EUIPO is a very simple step. Paragraph 3.2.1 of Part A, Section 5, of the Guidelines provides a mechanism to name a representative where there is the obligation to do so, and the owner has not complied with this obligation. In fact, the Office always invites the applicant to designate a professional representative, allowing a term to do so, in representation, opposition or cancellation proceedings.
On the other hand, we think that the United Kingdom’s decision to remain or not to remain in the EEA after Brexit will be made well in advance of the date of Brexit. Trade mark and design owners who need representation will be aware long before that date of those cases where, since the representative is British, a new representative will have to be named.
3.2 Professional capacities of representation before EUIPO incompatible with Brexit
The link between the right to represent before EUIPO and the right of representation before a national office of an EEA member state is inter alia due to the fact that the European Union Trademark regulation and the Community Design regulation are linked with the national legislations of member states, which have been harmonized by the corresponding EU Directives.
This means that professional representatives of EEA member states are supposed to know such law and practice which, due to harmonization, are very similar to those being applied by the EUIPO. The same applies to the jurisdiction that the European Courts of Justice have in connection with EUIPO decisions, with European Union Courts and with national matters, through prejudicial rulings.
Obviously, this will not ensure a sufficient capacitation of British practitioners to represent third parties before EUIPO.
3.3 Economic impact of professional activities in the EEA countries
According to Article 119.2 of the European Union trade mark regulation:
‘Without prejudice to the second sentence of paragraph 3 of this Article, natural or legal persons having neither their domicile nor their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area shall be represented before the Office in accordance with Article 120(1) in all proceedings provided for by this Regulation, other than the filing of an application for an EU trade mark.’
And according to the article 77.2 of the Community Design Regulation:
‘Without prejudice to the second subparagraph of paragraph 3, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must be represented before the Office in accordance with Article 78(1) in all proceedings before the Office established by this Regulation, other than in filing an application for a registered Community design; the implementing regulation may permit other exceptions.’
Natural and legal persons located outside the EEA must be represented before the Office.
This means that there are a lot of cases originating from outside the EEA which must be handled by professional representatives, an important amount of professional activity representing an important generation of employment and income, which in turn leads to the payment of income tax. Due to several reasons, an important share of this activity, employment and taxation is currently being directed to professionals in the United Kingdom.
It would be unfair that, once Brexit takes place and the United Kingdom is no longer a member of the EEA, the United Kingdom continues to take advantage of a European Union Intellectual Property system to generate employment and tax income in the United Kingdom to the detriment of EEA member states.
For all the above reasons, the outcome of the negotiations between the European Union and the United Kingdom in connection with professional representation before EUIPO, if the United‐Kingdom does not remain in the EEA, should be that, as from the date of Brexit, British professional representatives are not entitled to represent before EUIPO without any transitional period at all.