Professional representation update - 30 January 2017

EU-flagOur Brexit Task Force have been continuing to look at the issues and options with regards to rights of representation.

A sub-group has been set up to consider the options for qualification as an Irish trade mark agent, something which we know some CITMA members may be considering. CITMA is still committed to trying to ensure representation before the EUIPO is not lost and we continue to raise the matter at every opportunity. We have been discussing with the UK IPO and have recently written to the Ministry of Justice (MoJ) who have an interest in rights of representation for the legal profession more generally.

The Law Society have submitted a report to the Department for Exiting the European Union and the MoJ which raised, amongst other points, the issue of rights of representation (http://www.lawsociety.org.uk/news/press-releases/uks-place-in-global-economy-underpinned-by-strong-legal-sector/). Currently we are seeking to have a meeting with both departments to discuss the situation for Chartered Trade Mark Attorneys more specifically.  

We hope the following provides some useful information in relation to qualification in Ireland, as you consider your options.  

For further information more generally about rights of reputation, please see the CITMA note “Professional Representation before the IPO post-Brexit” at:  

https://www.citma.org.uk/membership/eu_resources/eu_brexit/professional_representation_before_euipo.  

To re-cap, Article 93 requires that a professional representative before the EUIPO needs to be (1) a national of a member state in the European Economic Area (EEA); (2) entitled to act before a trade mark office of a member state of the EEA; and (3) have a place of business in an EEA member state.  

However, Section 86 of the Irish Trade Marks Act 1996 adds a further requirement that, to be entitled to act as Irish trade mark agent, an individual must also be resident in an EEA member state.  

Although clearly the UK is currently a member of the EEA, post-Brexit, if the UK leaves the EU, it may also leave the EEA. The Irish Patent Office has the authority to remove an existing trade mark agent from the Irish register if that agent loses his/her entitlement. As such, although a CITMA member may currently qualify as an Irish trade mark agent, following Brexit, that agent may lose his/her entitlement and be vulnerable to having his/her name removed from the Irish Register.  

Nevertheless, for those interested in qualifying as an Irish trade mark agent, qualification is by a single exam set this year for 25 April 2017. Applications need to be submitted by 31 March 2017 (examination fee: €200). For further information see:   https://www.patentsoffice.ie/en/News/Current-News/Official-Notice-Examination-in-Law-Practice-of-Trade-Marks.html  

A candidate needs to obtain a 50% pass rate on each of Sections A (Irish trade mark law), B (trade mark practice) and C (EUTM practice).  

The Irish Patent Office has also recently announced that the exam will include for the first time one optional question on industrial designs.  

For those interested, Bloomsbury Professional Publishers are offering a 20% discount for CITMA members on the recently published 4th edition of Intellectual Property Law in Ireland by Robert Clark, Shane Smyth and Niamh Hall (http://www.bloomsburyprofessional.com/ie/intellectual-property-law-in-ireland-9781780435411/).

The discounted price will be €196 + €5.50 P&P. Please contact Jennifer Simpson at Jennifer.Simpson@bloomsbury.com to place an order.