The final phase of Brexit is becoming totally uncertain and now more than ever we fear to face the consequences of a no-deal divorce from the EU.

In any case, if Brexit should come to an end, the power of representation before the EUIPO (European Union Intellectual Property Office) concerning industrial property rights at European Union level, is to be reconsidered.

Indeed, non-resident citizen in a Member State of EU may apply for a trademark registration autonomously, i.e. without being represented by a legal practitioner. However, according to art. 120 (1)(a) of the regulation 2017/1001 on the European Union trademark “the Representation of natural or legal persons before the Office may only be undertaken by a legal practitioner qualified in one of the Member States of the European Economic Area and having his place of business within the European Economic Area, to the extent that he is entitled, within the said Member State, to act as a representative in trade mark matters”.

Therefore, unless the United Kingdom adheres to the European Economic Area (EEA) – rather unlikely I would say – UK qualified legal practitioners shall no longer authorized to act as representative of natural or legal persons before the EUIPO. In addition to this, the issue arises in particular in connection with the “old” trademarks – i.e. already registered in the European Union – since British legal practitioners are already registered as authorized representatives.

The EUIPO has confirmed that legal practitioners who lose the title to represent a person before the EUIPO as a result of “hard Brexit” shall be removed from the files relating to the European Union trademarks. Also, they will immediately be deleted from the list of representatives authorized to represent a person before the EUIPO. Such a regime to be entered into force from the definitive exit of the United Kingdom from the EU. In light of the above, it is crucial that legal and natural persons resident in the UK, whose trademark are registered before EUIPO, take immediate steps to maintain their trademarks duly registered in the EU.

Our MEP LAW’s Intellectual Property Department with offices in Rome and London enjoys a strong reputation in Intellectual Property matters, trademarks registration as well as Industrial Property disputes. Thanks to our partnership with the major Industrial Property consultancy firms in Italy we can assist in this significant change of legislation at European Level due to Brexit.

Fabio Maggesi

Fabio Maggesi