Professional representation before the EUIPO post-Brexit

EU-flagWorking document as at 12th August 2016

CITMA's primary objective on professional representation rights is to work with the UK Government to ensure that the terms of any settlement with the EU will include the ability for UK trade mark attorneys to continue to act before the EUIPO. We will provide additional information as the position becomes clearer.

However, in the interim, members may wish to consider in detail the provisions of Article 93 and the requirements for entitlement to determine whether they may have other options for retaining their ability to act before the EUIPO, should the requirements remain in their current form post-Brexit.

Article 93 of the EUTM Regulation sets out the current requirements for an individual to act either as a professional representative or legal practitioner before the European Union Intellectual Property Office (EUIPO). The basic requirements are that the individual either be qualified (legal practitioner) or “entitled to act” (professional representative) before the national office of a member state of the European Economic Area (EEA).

The EUIPO will remove an individual from the list of professional representatives when that individual no longer has capacity to represent (Article 93(5) and Rule 78 CTMIR). In other words, when the UK leaves the EU, it is likely that UK trade mark attorneys will no longer be able to act as professional representatives before the EUIPO.

Legal practitioner

Under Article 93, the individual needs:

  1. To be a legal practitioner qualified in a member state in the EEA; and
  2. A place of business in a member state of the EEA.

Note that the individual does not need to be qualified and have his place of business in the same EEA member state.

Post-Brexit, unless the UK remains within the EEA, UK lawyers (including Registered UK Trade Mark Attorneys) will no longer qualify as legal practitioners. If a member can obtain qualification as a legal practitioner in another current EEA member state (e.g. as an Irish solicitor for those members who are dual qualified both as trade mark attorneys and solicitors), provided that he/she has a place of business anywhere in the EEA, he/she may be able to continue to act.

Professional representatives

Under Article 93, the individual needs:

  1. To be a national of a member state in the EEA;
  2. To be entitled to act before a trade mark office of a member state of the EEA. This can either be by qualification or because the individual has acted before that office for at least five years; and
  3. A place of business in a member state of the EEA.

Note, again, that the individual does not need to be qualified and have his place of business in the same EEA Member State.

The EUIPO can, and has, granted in the past a number of exemptions to the nationality requirement. As such, if a member can obtain qualification as a professional representative in another current EEA member state provided that he/she has a place of business anywhere in the EEA, he/she may be able to continue to act.

Article 78 of the Community Designs Regulation contains equivalent provisions for legal practitioners and professional representatives wishing to act in relation to registered Community designs. However, the provisions in this case are limited currently to the EU, rather than the EEA.

CITMA is looking at the practical implications of obtaining qualification in other EEA member states as a legal practitioner or professional representative and will provide additional information in due course.

Liaison with other organisations is vital to achieving the best outcome, we are already working closely with the Intellectual Property Lawyers Association (IPLA) and are speaking to many others including CIPA on this issue.

© 2016 The Chartered Institute of Trade Mark Attorneys

You may have questions or comments, so we have set up a new discussion board for you to share any thoughts, comments or questions you may have. You will need to log-in to the CITMA website in order to post a comment, but the discussion board can be found here.