17.04.2025
On 10 April 2025, the Government published responses to the second transformation consultation, which focused on changes to the IPO’s trade mark, design and tribunal services. This follows the first transformation consultation, published on 1 August 2023, which centred around the new digital patents service.
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The One IPO Transformation programme is the Government’s five-year plan to modernise how the IPO delivers its services in the digital age, from technical improvements and advanced tools, to fundamental changes to law and policy.
Key changes to be implemented following the second transformation consultation include:
The IPO plans to extend its new One IPO Search tool to trade marks and designs (currently only available for patents). When this is launched, documents such as examination reports will be available online for public inspection.
Of course, this must be balanced with the need to protect confidential information. As such, it follows that rules on confidentiality requests will also change, enabling anyone to request, at any time, that their information is kept confidential.
This is a welcome change, addressing a strong public interest in official documents being available for inspection once an application has been published.
It is currently possible to apply for up to 6 trade marks in a series mark application. The trade marks in the series must look, sound and mean the same, with only minor differences between them, typically in colour and stylisation of font. Series marks are not intended to provide materially different protection to each mark in the series, rather to offer a cost-effective way of registering multiple non-distinctive variations of a mark.
However, satisfying the criteria can be confusing, particularly for unrepresented applicants who comprise 65% of series mark applications. There is a high objection rate for series marks, with many unrepresented applicants filing substantially different marks as part of a series. This ultimately results in applicants incurring additional fees in re-filing their trade marks, meaning it doesn’t end up being a cost-effective option.
Following consultation, the Government has decided to abolish series marks. It is expected that this will simplify the application process for unrepresented applicants.
This reflects a substantial change in practice, creating greater harmonisation with other international jurisdictions, most of which do not provide for series mark applications. Holders of existing series marks needn’t worry, their rights will remain in force and transitional provisions will enable them to be maintained.
Series mark applications will only be discontinued when the new digital trade marks service is launched, development of which will begin in autumn 2025.
In summer 2025, the IPO Tribunal will trial mediation meetings for disputes between unrepresented parties.
We have seen a clear move in the international landscape of intellectual property offices offering mediation services as a form of alternative resolution to formal legal proceedings, such as the EUIPO launching their ground-breaking Mediation Centre in 2023.
The IPO trialling mediation meetings reflects their commitment to keep in line with the international offering, developing this area of expertise. It remains to be seen if this service will provide a quicker and cheaper resolution for unrepresented applicants.
Overall, the changes will likely be welcomed by applicants and IP practitioners alike, bringing greater harmonisation with the broader international landscape and simplifying customer interaction with the IPO.
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16.09.2024
Apple stops abuse of processIt is rare for an abuse of process case to be heard before the UK IPO, but that is what has happened recently. In August 2024, the UK IPO’s Tribunal upheld applications by Apple Inc (“Apple”) to strike out invalidity actions against its ‘iPhone’ trade mark registrations on the basis that the actions amounted to an abuse of process. This article explores the facts, issues and implications of this decision.
28.10.2024
Electronic Applications for Action (eAFAs) to Customs are now mandatory in the EUWe refer to our mailshot earlier this year which discussed the protection of intellectual property rights and the prevention of infringing or counterfeit goods from crossing borders by filing Applications for Action (AFAs) with customs in the UK and EU.
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