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Viscount Camrose, Minister for AI and Intellectual Property has responded to The Chartered Institute of Trade Mark Attorneys’ (CITMA) report into “Unregulated representatives in the UK Intellectual Property system”, confirming that he has instructed the UK IPO to further investigate the issues raised by the report.
The CITMA report, published in June 2023 and fully titled “Unregulated representatives in the UK Intellectual Property system: Evidence of harm and call for investigation” (the Report) is the result of research carried out by CITMA into the harm caused to users of the IPO, by what it terms “the increasing presence of unqualified, and therefore unregulated, representatives in the UK IP system”.
CITMA proposes a change to the law, such that in order to represent someone other than yourself at the Intellectual Property Office (IPO), you must:
have a UK address for service; and
be regulated by an appropriate UK body (e.g. CIPA, CITMA and the Law Society, this list being non-exhaustive); or
be an employee representative of the company or group of companies, which is the applicant or the holder of the right in question.
In support of CITMA’s proposals, the Report presents findings that:
- consumers of the UK IP system are facing higher costs, delays and disruption to business as a result of the presence of unregulated representatives;
- the issues identified are getting worse; and
- over 90% of responding Chartered Trade Mark Attorneys believe the IPO should take action on the issue.
In responding to the Report, Viscount Camrose wrote
“[the] paper certainly highlights some interesting behaviour which I agree merits further investigation. Consequently, I have asked the IPO to undertake an internal review of the issues you raised. They will aim to determine the scale and impact of any harm, and will consider whether any response, such as the changes to rules on representation that you have proposed as a potential solution, is merited.”
The change to the law proposed by CITMA would effectively mean that use of the UK IPO would be restricted to UK qualified and regulated legal representatives (subject to the exception that rights holders may represent themselves). This change would bring the UK in-step with the United States (which requires foreign-domiciled trade mark applicants and registrants to be represented by an attorney licensed to practice in the US), although not as far as the European Union Intellectual Property Office (which requires that representatives be qualified in the European Economic Area (EEA), be an EEA citizen, and have a proper place of business in the EEA).
It remains to be seen whether the IPO will recommend the proposals put forward by CITMA and whether this will be adopted by the UK Government.
The full contents of the CITMA report can be seen at: https://www.citma.org.uk/resources/unregulated-representatives-in-the-uk-intellectual-property-system-evidence-of-harm-and-a-call-for-investigation-mb23.html
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