Column By Robert Cumming and Adam Tindall Political issues

and more business-friendly model than What will the devolution of the current UK one which is seen as bureaucratic and expensive, especially for small firms.” Scotland from the United However, being outside the European systems means that Scottish businesses Kingdom mean for IP rights? trading in the European Union would have to register in Scotland as well, which would surely only increase costs and bureaucracy. As Scotland gears up to a referendum to registration of a similar mark in Scotland – If Scotland became a member of the Patent determine whether it will break away an invidious position for a newly sovereign Cooperation Treaty – which any contracting from the rest of the United Kingdom, country. Likewise, with designs and patents, state to the Paris Convention can become – questions are being raised about what it seems unlikely that an independent then not being part of the EU systems may this will mean for IP rights – particularly Scotland would allow rights established in the be slightly less of an inconvenience. if devolution leaves Scotland outside the remainder of the United Kingdom to inhibit For businesses in Scotland wanting European Union the economic activity of entities in Scotland. protection in Europe, the EU systems would Perhaps Scotland will establish a system still be an option, although they would need On May 1 1707 the kingdom of Scotland of re-registration, whereby owners of representation from a legal professional as and the kingdom of England combined existing national rights on the UK register they would no longer be residents of the to form a single political union, which may protect them on the Scottish register European Union – the most convenient eventually formed the United Kingdom within a specified timeframe. Scotland ones would be located, ironically, in the and today comprises four separate but may also become a signatory state to the United Kingdom. One also imagines that intertwined countries – England, Scotland, Paris Convention and Madrid Protocol, Scottish IP professionals – suddenly unable Wales and Northern Ireland. Now the so at least claiming priority rights from a to practise EU law, but equally the world residents of Scotland are being asked Scottish patent or design application should experts in Scottish patent law – would find whether the country they live in should be straightforward, as would designating little economic incentive to reduce the cost be truly independent from the rest of the Scotland as a separate jurisdiction under the of obtaining protection in Scotland. United Kingdom. A yes vote could result in a Madrid system. With regard to enforcement of CTMs and headache for businesses wanting IP rights in designs, a national court has the power to the new Scotland. Leaving the European Union grant an EU-wide injunction for infringement, Where it gets trickier is in relation to the but only if the country is a member of the IP rights in the United Kingdom supranational rights administered by OHIM European Union – an option that would not If Scotland votes to leave the United and the EPO. As the United Kingdom is a be available to Scottish businesses. Kingdom, IP owners with rights in Scotland member state of the European Union, an The Scottish government has also hinted will be fundamentally affected, whether independent Scotland would effectively be that it might introduce protection for they are Scottish nationals or foreign seceding not just from the United Kingdom, technical innovations with something akin companies contributing to the Scottish but also from the European Union. Several to a German utility model (www.scotland. economy. Scotland’s first minister, Alex senior officials in the European Union have gov.uk/Publications/2013/11/9348/15 – Salmond, has said that intellectual property clearly indicated that admission back into paragraph 67). This would be fine for will continue to be protected, although the the European Union would be far from obtaining IP rights in Scotland, but less details of this have not yet been developed guaranteed for Scotland. convenient for Scottish businesses seeking and will not be unless the yes vote prevails. The upshot for rights holders would IP protection overseas in the many In the United Kingdom, two routes be that Community trademarks (CTMs), countries that do not have utility models. are available for protecting trademarks, Community designs and European patents One might argue that downgrading the designs and patents: national rights which would no longer be enforceable in Scotland. barrier to entry to IP rights in Scotland apply across the United Kingdom and Although Scotland may choose to recognise would actually be anti-Scottish, as it would are administered by the UK Intellectual these rights as being valid through the enable non-Scottish entities to obtain Property Office; and supranational rights adoption of national legislation, the same enforceable rights more easily in Scotland which apply across a range of European would not work in reverse. To maintain the against Scottish businesses. countries and are administered by the validity of their CTMs, Scottish businesses Office for Harmonisation in the Internal would need also to trade outside Scotland Not so ‘.sc’ peasy Market (OHIM) and the European Patent in order to prove that the mark had What about names? The United Kingdom Office (EPO). genuinely been used. Similarly, registered or would still exist, but probably as the United Post-independence, Scotland could pending Community designs and European Kingdom of England, Wales and Northern well create its own IP office to administer patents might be recognised in Scotland, Ireland. Use of ‘GB’ – although inaccurate, a Scottish register of trademarks, designs at least in the short term. However, after as a large chunk of the island of Great and patents. It seems improbable that secession, applicants would be likely to Britain would be independent – would Scotland would share the United Kingdom’s have to seek protection in Scotland as well be likely to linger for historical reasons, register because the status quo means that, as the European systems (and the likely not least because this is the official ISO for instance, a mark which is used only in impending unitary patent system). 3166-1 alpha 2 code assigned to the United England would remain validly registered Salmond says: “Independence will Kingdom in 1974 by the International and could therefore prevent the use or allow Scotland to offer a simpler, cheaper Organisation for Standardisation and

96 World Trademark Review June/July 2014 www.WorldTrademarkReview.com adopted by the World Intellectual Property rationalisation and risk assessment process Office, OHIM and the EPO. for existing IP rights, in particular to: If it chooses to move outside the United • ensure that any trademarks are used Kingdom, Scotland will need its own in Scotland and the rest of the United country code, although the choices are slim: Kingdom to maintain their validity; ‘.sc’ already belongs to the Seychelles, ‘.st’ to • consider whether any British or GB São Tomé and Príncipe and ‘.sd’ to Sudan. branding is appropriate and versatile In fact, there are only three unassigned enough to adapt to any changes to prefixes beginning with ‘s’, none of which the flag, country codes or national appears appropriate, which might explain sentiment; and why ‘.scot’ is the preferred new domain. • allocate additional budgets for the re- registration of trademark, design and Getting in a flap patent portfolios in Scotland. It is not only vexillologists who will be keen to learn about the possible appearance of Scottish businesses should be prepared the first new UK flag since 1801. Brands to instruct UK representatives to prosecute which incorporate the UK flag into their and enforce CTMs, Community design logo design will need to refile if the rights and European patents. WTR United Kingdom chooses to adopt a new flag without the blue saltire of the Saint Andrew’s Cross. This would also have a knock-on effect for Australia, New Zealand and a handful of other states. Robert Cumming and Adam Tindall are senior associates at Appleyard Lees How businesses can plan ahead [email protected] All businesses should undertake a [email protected]

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