Marks and Clerk exhibition stand

Paul Chapman, Marks & Clerk’s Edinburgh office and a member of the Marks & Clerks Brexit committee

Intellectual Property specialist Marks & Clerk is a lead sponsor of the Scottish Knowledge Exchange Awards 2018 taking place on 22 February in Edinburgh. Here Paul Chapman from Marks & Clerk’s Edinburgh office, and a member of the Marks & Clerks Brexit committee, looks at Brexit as the major event of 2018.

Nearly one year on from the triggering of Article 50, Brexit will continue to be the foremost concern for businesses throughout 2018 and there isn’t a business in the country that won’t in some way be impacted by Britain’s leaving the EU. Businesses need to plan for Brexit now and ensuring intellectual property rights are protected is central to this.

On trade marks for example, the EU announced in a recent communiqué that, in the absence of any agreement to the contrary, attorneys and other representatives ‘that are domiciled or have a seat in the UK only’ will – following the UK’s departure from the EU – lose representation rights before the European Union Intellectual Property Office (EUIPO).

The same communiqué also announced that – again in the absence of any agreement to the contrary - ‘EU rules on EU trade marks and community designs will no longer apply in the United Kingdom’.

Whilst this sounds drastic, it is worth emphasising that this is a worst case scenario, based upon no agreement on intellectual property harmonisation between the UK and the EU being reached. The prevailing view remains that it would be  commercially unacceptable to deprive proprietors of EUTMs of the registered trade mark protection they previously enjoyed in the UK via their EU trade marks following Brexit and the EU’s position statement on intellectual property rights states that holders of Community (ie EU) rights should not suffer any loss of protection on Brexit.  What is not known is how this will be achieved.

It should also be noted that the communiqué applies only to those intellectual property attorneys or representatives domiciled in the UK only. Marks & Clerk has had a presence in the European Union for nearly 30 years, with offices in France and Luxembourg. For firms with bases in the EU such as Marks & Clerk, the UK’s leaving the EU will not impact the ability to serve clients in the UK or the EU, or to make representations before the EUIPO. Whilst the UK is leaving the EU, Marks & Clerk is not. For firms domiciled solely in the UK however, there is clearly a risk here.

Despite the uncertain status of EUTMs following Brexit, much of the architecture of intellectual property law will remain unchanged. International intellectual property agreements to which the UK is party for example – such as the Paris Convention and the TRIPS Agreement – exist outside of the EU so will be unaffected by Brexit. Likewise, relationships between the UK and the European Patent Office also exist outside the remit of the EU.

The two bodies which grant patents covering the UK – the UK Intellectual Property Office (UKIPO) and the European Patent Office (EPO) – are also outside the EU and will continue to operate. As the UK will continue to be a contracting state to the European Patent Convention, applicants will also be able to file their applications with the EPO and, on grant, request validation in the UK and other countries of interest.

So while Brexit promises change, there will also be a good deal of continuity.

There’s no room for complacency however. Intellectual property is key to successful business – whether it’s the inventions that emerge from lengthy research and development exercises or the trade marks used to define a brand – protecting these assets is vital. Planning for the challenge of Brexit now will mean intellectual property is properly protected when the UK leaves the EU and that intellectual property remains a cornerstone of the British economy.

Its patent and trade mark attorneys offer a full range of intellectual property services – covering patents, trade marks, designs and copyright – for clients ranging from SMEs and spinouts to universities and multinationals.

The firm’s patent attorneys all have scientific or engineering backgrounds whilst its trade mark attorneys advise on all areas of brand protection.

Services include: obtaining patent and trade mark protection worldwide; portfolio management; IP strategy and commercialisation; licensing; enforcement; and due diligence.

Marks & Clerk was co-founded in 1887 by Scots inventor Sir Dugald Clerk and renowned engineer George Croydon Marks. Its long-established Scottish practice traces its roots (as Cruikshank & Fairweather) back to 1886, making it the oldest firm of patent attorneys in Scotland. Marks & Clerk now employs over 60 staff across its Scottish offices.

With a network of 16 offices across the UK (eight locations), continental Europe, North America and Asia, and long-established relationships with other leading IP firms worldwide, the firm is able to assist innovators to protect and maximise the value of their intellectual assets on a local and global basis. Registration is now open for The Scottish Knowledge Exchange Awards 2018. 

11 January 2018