Law and practice snippets: April 2025
An update on recent practice points by our Law and Practice Committee - including changes to UK IPO forms, fraudulent emails and series marks.
News of note
UK IPO – Second transformation consultation response
The UK IPO has published the government response to its second transformation consultation being published on 10th April 2025. The consultation ran between August and October 2023 and primarily focused on changes to the UK IPO’s trade mark, design and tribunal services, the development of which is expected to begin in autumn 2025 (slightly later than anticipated).
The main outcomes of the consultation affecting trade mark and design practice are as follows:
- Publishing trade mark and design documents online for the first time, alongside changes to the rules governing confidentiality requests and inspection of designs documents.
- Simplifying trade mark applications by discontinuing the series marks service for new applicants in the future.
- Trialling mediation meetings for disputes at the IPO Tribunal, in cases where neither party has legal representation.
UK IPO – Changes to designs and trade mark forms
On 7th April 2025, the UK IPO published details of changes to certain designs and trade mark forms to improve clarity and facilitate processing. The changes are effective immediately from the date of publication and include the following:
- Designs Form DF2B (Application to register designs divided from an earlier application) – Question 3 has additional wording “(excluding your original design application)” added;
- Trade Marks Form TM12 (Request to divide an application) – an update to the explanatory wording at the top of the first page in the grey box.
- Trade Marks Form TM16 (Application to record a change of ownership) - The category “Assent of personal representative” in question 7 has been replaced with “Assent”; and additional supporting text added stating “Assent – This is used when carrying out duties as executor/administrator of a deceased person’s estate.”
- Trade Marks Form TM24C (Application to cancel a security interest) – an update to explanatory notes, and corrections to wording at questions 4 and 5 relating to the start date of the original charge/security to be cancelled and signature of the form.
- Trade Marks Form TM31R (request for a certified copy) – question 5 has been removed.
Click here for further details
Working with the registries
Via the Law and Practice Committee, CITMA meets regularly with the UK IPO and other registries to discuss points of practice and raise important feedback and questions submitted by members.
UK IPO – Updated guidance following SkyKick decision
The UK IPO are reviewing the potential impact of the SkyKick case on trade mark filings, including at the examination stage and before the Tribunal. The L&P Committee have shared a range of points of view with the UK IPO and updated guidance is expected from the UK IPO in the coming months.
UK IPO – Trademark Expressive emails
Several members reported that clients had received emails from Trademark Expressive, reporting to be IP attorneys or solicitors and stating that the client did not own a registration. The emails were signed by an individual.
The L&P Committee raised this issued with the UK IPO who had also become aware of the matter and information had been shared with the relevant units at the UK IPO, including the UK IPO’s Customer Experience Unit and the recently formed Project Clarity in the Enforcement Hub.
It appears that the trademarkexpressive.com website is now no longer in operation. The matter had also been brought to the attention of the Solicitors Regulation Authority who has investigated and confirmed that regulates a genuine solicitor whose name has been used in the scam, but believes he is not connected to the emails being issued to trade mark owners.
Click here for a recent update from the Solicitors Regulation Authority on this matter.
Sharp practice
Together we continue to monitor requests for payments and other examples of sharp practice. Please continue to send examples to [email protected], along with confirmation that your client is happy for the information to be sent to the UK IPO.
International updates
EUIPO – Changes to registered design renewals effective 1st May 2025
The EUIPO will implement updates to the rules for European design renewals, affecting deadlines and official fees. The two main changes to be aware of are as follows:
- Expiry of rights will take effect from the expiry date (not the end of the month). A six-month grace period still applies thereafter, immediately after the expiry date.
- An increase in renewal fees takes effect from 1st May 2025.
For any designs with a renewal period starting before 1st May 2025, the old system will be used to determine the renewal and grace periods and any fees paid before this date will be based on the current fees.
EUIPO – Fraudulent email warning
On 17th April 2025, the EUIPO issued an urgent warning about fraudulent emails currently in circulation. These deceptive emails falsely refer to the EUIPO Executive Director, and claim to be signed by the EUIPO Director of Finance (Nour-Eddine H.) soliciting the payment of a supposed registration fee in bitcoins.
Click here for more details - including a link near the top in the article to an example of the email which is in circulation, as well as details of how users can report receipt of scam emails.
Also, by way of reminder, the EUIPO publish all misleading payment requests which it is aware of in a searchable database to warn users, click here to view.
USPTO – Suspension of expedited examination of design applications
Effective from 17th April 2025, the USPTO has suspended expedited examination of design applications in an effort to combat fraud and reduce pendency and inventory of unexamined design applications. Click here for more details