Retained EU Law (Revocation and Reform) Bill

Written evidence submitted by The Chartered Institute of Trade Mark Attorneys (CITMA) (REULB49)

Call for written evidence: Retained EU Law (Revocation and Reform) Bill

1. Thank you for the opportunity to provide written evidence on the Retained EU Law (Revocation and Reform) Bill (‘Bill’). Given its wide-reaching implications, it is vital that Parliament carefully considers the Bill, and the Chartered Institute of Trade Mark Attorneys (‘CITMA’) is well-placed to provide an on-the-ground view from a trade mark and intellectual property (‘IP’) perspective.

2. Our view is informed by CITMA’s more than 1,700 trade mark and design professional members. These professionals help to support our IP industry, which contributes £770bn to our GDP each year and is responsible for 1 in 5 UK jobs.

3. We do not propose to traverse the Bill in any detail. Instead, we believe there is a simple change that could be made that will help to deliver the growth we are all looking for and that truly aligns with making the most of our Brexit opportunities – the very intent that sits behind the Bill.

4. Following Brexit, UK trade mark and IP representatives lost the right to appear before the EU Intellectual Property Office because they are not qualified in, or do not have a genuine place of work in, a Member State. By contrast, EU practitioners simply need a UK address for service to act before the UK Intellectual Property Office (‘UK IPO’), even if that is simply a PO Box or virtual office.

5. As a result of this uneven playing field, our system is becoming increasingly mired in avoidable disputes as thousands of applications are made every year by foreign practitioners looking to take advantage of our public infrastructure. That is despite them often having no intention to set up business here, employ British people or to share wealth within the UK.

6. New research shows that in just three years, the number of foreign based attorneys/firms appearing before the UK IPO has more than doubled and they now account for 35% of firms in the Top 100 trade mark filers, compared with just 16% in 2019 before our departure from the EU. This has resulted in tens of thousands of applications from foreign based practitioners clogging our system, causing delay and additional economic cost for British businesses.

7. This slows down our system, creates unnecessary legal disputes for our innovators who should be freed up to get their products to market, and is unfair to our trade mark and IP professionals who cannot appear in the EU system.

8. Many members’ contributions at the Bill’s Second Reading highlighted the opportunity presented by the Bill to take control of our regulatory system. Other contributions cited the need to support British business and not place additional hurdles in front of them.

9. CITMA supports both sentiments – but if they are to mean anything, then surely this loophole should be closed.

10. We are urging the Government to rectify this anomaly between the EU’s restrictive rules for appearing before their IP system, and the UK’s far more relaxed ones. New rules should be introduced in order to ensure that anyone who appears before the UK IPO is properly regulated and qualified with knowledge of the UK system.

11. We believe that this Bill may provide the means to deliver this tighter system, which is already in place in other key markets such as the US, Canada and the UAE. In those jurisdictions, strict rules prevent those acting who are not qualified or regulated to do so – thus ensuring the consumer is protected and well served. This system has also seen the US able to deal with offending false and potentially fraudulent filings, allowing its register and trade mark office to accurately reflect true business looking to operate there.

12. Committee members will also be grappling with the far-reaching consequences of this Bill if implemented as drafted. On this point, CITMA asks that Parliament ensures there is adequate time and resource available to enable appropriate scrutiny of retained EU law. We stand ready to work with the UK IPO to help minimise or avoid any unintended consequences, which can easily be the product of a rushed or overwhelmed law making process.

13. We would be delighted to provide further evidence in greater detail if that would be of benefit to the Committee. In the meantime, we look forward to working with members to help achieve the aims of this Bill, because regardless of our views on Brexit, we can all agree with the need to support our innovators to deliver UK growth.

The Chartered Institute of Trade Mark Attorneys

16th November 2022