Law and practice snippets: December 2023
An update on the latest practice points of note by our Law and Practice Committee including UK IPO address for service, Nice Classification and the EUIPO GI hub.
News of note
UK IPO updates address for service guidance
In accordance with the UK IPO’s published guidance on address for service requirements, from 1st January 2024, all new proceedings and requests to change an address on comparable rights will require an address for service that is in the UK, Gibraltar, or Channel Islands. Further information is available here: https://www.citma.org.uk/resources/news-policy/news/uk-ipo-updates-address-for-service-guidance-mb23.html
Working with the registries
Via the Law and Practice Committee, CITMA meets regularly with the UK IPO and other registries to discuss in detail points of practice and raise important feedback and questions submitted by members.
We have recently discussed the following with the UK IPO:
Submitting large files to the IPO
At a recent meeting with the IPO, the Committed discussed the submission of large files to the UKIPO, in particular in tribunal proceedings. The IPO are making improvements to the options for submission of large files in the Transformation Programme, but in the meantime have updated paragraph 4.8.4.1 of the Trade Marks Manual to confirm that it is possible to submit large files using electronic storage media, such as a portable USB memory stick. The IPO also confirmed that in cases where a witness statement and exhibit front sheets have been submitted electronically to meet a deadline, the IPO’s practice is to accept memory sticks which follow by post within a reasonable timeframe.
IPO Transformation Programme: Second consultation
The Committee has responded on behalf of CITMA and its members to the UKIPO’s second consultation relating to its transformation programme. The consultation included questions relating to online public document inspection service for trade marks and designs and to the ongoing provision of series trade marks, amongst other questions. Full details of the consultation can be found here: https://www.gov.uk/government/consultations/ipo-transformation-programme-second-consultation/ipo-transformation-programme-second-consultation and CITMA’s response is here: https://www.citma.org.uk/resources/citma-response-to-ipo-transformation-iipdf.html.
Specification limitations and Observations
At recent meetings with the IPO, the Committee has discussed issues relating to the filing of specification limitations and the filing of third party observations. The IPO are receiving an increasing number of specification limitations which, in the IPO’s view, do not meet the required standards of clarity and is currently preparing an update on this matter, which will be circulated in early 2024. In relation to the filing of third-party observations, the UKIPO is reviewing its processes to ensure compliance with GDPR, and an update is expected on this matter soon.
Wish-list for UK IPO One IPO transformation project
The Law & Practice Committee regularly discuss the One IPO Transformation Project with the UK IPO. A number of items have been suggested by the Committee and by members, which have been added to a wish-list for consideration.
If you have any questions or feedback for the UK IPO relating to law and practice, including any items you would like to add to the ‘wish list’ for consideration as part of the digital transformation project, please email [email protected] marking it for the attention of the Law & Practice Committee.
Sharp practice
Together we continue to monitor requests for payments and other examples of sharp practice. Please also 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 – Launch of new Mediation Centre for IP disputes
On 22nd November 2023, the EUIPO launched its Mediation Centre to provide alternative dispute resolution (“ADR”) services for IP disputes free of charge. The centre offers a range of services including mediation, conciliation and expert determination to all parties involved in inter partes proceedings before the EUIPO at second instance. Additionally, SMEs may request ADR for first instance proceedings (oppositions, cancellations and invalidities). This service will be gradually extended to all users in a phased approach during 2024 and 2025. An online ADR platform has been created to enhance accessibility, allowing mediators and parties to interact virtually in a secure and confidential environment and ensuring convenience for all parties involved in the dispute resolution process. More information is available here: https://www.euipo.europa.eu/en/news/euipo-launches-new-mediation-centre-for-ip-disputes
EUIPO – Launches Geographical Indication hub
The EUIPO’s new GI hub offers a central location to access information and learning materials for professionals engaged with or interested in the possibility of IP protection through Geographical Indications. More information is available here: https://www.citma.org.uk/resources/news-policy/news/euipo-launches-geographical-indication-hub-mb23.html.
WIPO – Amendments to Regulations
The Madrid Union Assembly adopted amendments to Rules 17, 18, 32 and 40 of the Regulations under the Madrid Protocol that will enter into force on 1st November 2023. The changes include a new requirement for any provisional refusal to specify the time limit (the start and end dates) for a response. Further changes will come into effect on 1st November 2024. Full details of these changes are available from WIPO here https://mailchi.mp/wipo.int/madrid-system-amendments-to-the-regulations-november-1-2023-and-november-1-2024?e=b08822cf29 and https://www.wipo.int/edocs/madrdocs/en/2023/madrid_2023_26.pdf
WIPO – Entry into force of the 2024 version of the twelfth edition of the Nice Classification
A new version of the twelfth edition of the Nice Classification will enter into force on 1st January 2024, and will apply to any applications received by the Office of origin or by WIPO on or after that date. More detail is available from WIPO here: https://www.wipo.int/edocs/madrdocs/en/2023/madrid_2023_35.pdf
USPTO – Guidance on domicile addresses in trademark applications
On 30th August 2023, the United States Patent and Trademark Office (USPTO) issued guidance to clarify the steps examining attorneys and post-registration examiners will follow to evaluate trademark applicants’ and owners’ domicile information. The USPTO is required to collect domicile information as confirmation that the applicant is real or juristic person domiciled in the US, or with authorised US representation. In addition, the domicile address requirement is a crucial part of the Office’s efforts to fight unprecedented numbers of scam filings in recent years. The USPTO update can be found here: https://content.govdelivery.com/accounts/USPTO/bulletins/36cca3e with a link provided to the full examination guide 3-23 for full details.
USPTO – Delayed implementation of changes to post-registration response deadlines
On 11th September 2023, the USPTO announced it is delaying the implementation of the Trademark Modernization Act’s provisions for post-registration response deadlines, with a new effective date expected to be confirmed in spring or early summer 2024. Once the provisions become effective, registrants will have three months to respond to post-registration office actions, with a three-month extension available on request. More detail is available here: https://content.govdelivery.com/accounts/USPTO/bulletins/36f03a6.
USPTO – New trade mark search system launched
As 30th November 2023, the USPTO have retired the Trademark Electronic Search System (“TESS”) and launched a new cloud-based trademark search system with a simplified search interface. The new search system also supports more complex searching for advanced users. More information is available here: https://content.govdelivery.com/accounts/USPTO/bulletins/37b8811 and the new search tool can be found here: https://www.uspto.gov/trademarks/search?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=.
USPTO – New assignment system is replacing ETAS and EPAS
As part of its updates to online services, the USPTO is launching a new system, the Intellectual Property Assignment System (“IPAS”). The new system replaces the Electronic Trademark Assignment System (“ETAS”) and the Electronic Patent Assignment System (“EPAS”) which are reformed into one system which will be available to users on 15th January 2024. More information is available here: https://content.govdelivery.com/accounts/USPTO/bulletins/37a349f.
Cases of note
D&M Winchester Limited and Coleburn Distillery Limited [A293/22]
A UKIPO decision has been appealed before the Court of Session in Scotland, making it the second time such an appeal has been brought in this forum. The appeal related to a UKIPO decision dated 25 October 2022 in consolidated opposition and revocation proceedings. The opposition was brought by Coleburn Distillery Limited on the basis of 5(1), 5(2(a) and 3(6). The UKIPO Hearing Officer found the opposition to be successful on all three grounds relied upon in relation to some classes. The Hearing Officer also found the revocation action brought by D&M Winchester Limited to be partially successful.
Coleburn Distillery Limited brought the appeal against the decision before the Court of Session. In its decision dated 5th October 2023, the Court gave detailed consideration to the issue of the ‘standard of review’, before going on to uphold the first instance decision in so far as it related to all findings on Section 5, but found that the Hearing Officer erred “in the manner in which he approached good faith”, concluding that the Hearing Officer’s “decision on this matter does lie outwith the bounds upon which reasonable disagreement is possible.” [para 60.] The appeal was therefore “partially successful, albeit to limited extent.” [para. 62].
The Outer House, Court of Session’s decision can be read here: https://www.scotcourts.gov.uk/docs/default-source/cos-general-docs/pdf-docs-for-opinions/2023csoh66.pdf?sfvrsn=2b743be4_1
Author
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Sharon Mackison
Director & Chartered Trade Mark Attorney, Lawrie IP