Law and practice snippets: February 2024
An update on this month’s practice points by our Law and Practice Committee.
News of note
UK IPO temporarily reintroduces bulk changes to address for service
The reintroduction of bulk changes allows a high volume of address for service change requests to be processed more efficiently following the 31st December 2023 end of the period in which rights holders of comparable trade mark and re-registered designs could appoint a new representative.
There are three options for how an address for service can be updated, which can be used in combination if necessary, which are explained in detail in this CITMA bulletin.
New cost cap system under the Shorter Trial Scheme
From 1st January 2024, costs for patent cases in the Shorter Trial Scheme (“STS”) within the Business and Property Courts are capped at £500,000 as part of a pilot scheme.
This trial will finish on 31st December 2026 and will apply to all claims which are issued in the STS in the Patents Court during pilot period.
Practice Direction 51ZD introduces a cap of £500,000 on the final determination of a claim in relation to liability and a cap of £250,000 on an inquiry as to damages or account of profits, with the aim of improving access to the Patents Court by reducing costs for less complex cases. Practice Direction 51ZD can be read in full here.
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.
UK IPO One IPO Transformation Project
An update on Transformation published by the UK IPO on 25th January 2024 confirms that the patents service will launch “no sooner than late 2024”, which is slightly later than planned, but that the IPO “currently expect the new trade marks, designs and tribunal services to launch in late 2025 as planned”.
Work on the trade marks, tribunals and designs services will begin in the next few months and the IPO welcome feedback from users.
You can read the full update here and visit the user research page to find out more and register your interest.
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 Transformation, 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 – Enhancements to eSearch Case Law
A number of enhancements were made to the eSearch Case Law to improve user experience, including the ability to copy case quotations and links to decisions, as well as improved display of search results. The EUIPO’s update is here.
WIPO – Changes to eMadrid
WIPO has redesigned and restructured its eMadrid homepage, and includes three new pages for ‘File an Application’, ‘Manage your Trademarks’ and ‘Find & Monitor’.
New features include options to reply to irregularity letters, pay fees, access your portfolio and upload Madrid System forms.
There is also a feature to explore goods and services in both the ‘File an Application’ and ‘Manage your Trademarks’ pages, where users can find out how many times over the last ten years major IP Offices have accepted specific terms in different languages. Read the full update from WIPO here.
WIPO – IP Facts and Figures 2023
WIPO have published an overview of intellectual property activity based on the latest available year of complete statistics.
The report includes global filing figures for different IP rights, and shows that in 2022, “trademark filing activity underwent a decline of 14.5%, down to 15.5 million” before stating that,
“The sharp decrease in trademark filing could reflect a return to normal filing levels after a surge in applications in 2020 amid the emergence of the COVID-19 pandemic.”.
The report also provides a breakdown of filings in 2022 by offices, classes, industries and more. Read the full report here.
China IP Newsletter
The latest UK-China Intellectual Property Newsletter was published on 5th February 2024 and includes updates on recent publications by the China National Intellectual Property Administration (CNIPA) relating to Provisions on the Registration and Maintenance of Collective Marks and Certification Marks, and Guidelines on the Distinctive Characters Required for Non-traditional Trade Marks.
The newsletter also includes IP statistics for 2023 released by Chinese government bodies, which includes the following trade mark related details:
- In 2023, China registered 4.383 million trade marks, examined 153,000 trade mark opposition cases, and concluded 373,000 cases of various types of trade mark review (cancellation, invalidation etc.).
- China received 6,196 Madrid applications from Chinese applicants.
- As of the end of 2023, China has 46.146 million valid registered trade marks.
- The average time for examining a trade mark remains at four months.
The newsletter can be downloaded from the UK Government website here.
Cases of note
Thatchers Cider Company Limited and Aldi Stores Limited [2024] EWHC 88 (IPEC)
Following a hearing in November 2023, the judgement in the look-a-like case brought by Thatchers against Aldi was handed down on 24th January 2024, with the court finding in favour of Aldi. The case was brought on the basis of infringement under 10(2)(b) and 10(3), as well as passing off.
Whilst the Court accepted Thatchers’ claims of reputation and enhanced distinctiveness through use (and that enhanced distinctiveness was attached to its mark as a whole, not any individual element), it found no real likelihood of confusion and also failed to accept allegations of tarnishment or detriment.
The passing off claim also failed, and Thatchers’ case was dismissed. The full judgment can be downloaded here.
Industrial Cleaning Equipment (Southampton) Limited and Intelligent Cleaning Equipment Holdings Co Ltd & Another [2023] EWCA Civ 1451
In a 2021 trade mark infringement case by Industrial Cleaning Equipment against Intelligent Cleaning Equipment and an associated company, the defendants unsuccessfully relied on acquiescence, with the judge finding the claim to have been issued before the expiry of the required five-year period.
The defendants appealed to the Court of Appeal, arguing that the time period for acquiescence should be calculated from the registration of its later marks, not from the date the claimant found out about the registrations, and also that the date of registration of its marks was the WIPO registration date, not the subsequent EU registration date.
The appeal failed on both counts following detailed reasoning, including regarding acquiescence regarding both Trade Mark infringement and passing off, by Lord Justice Arnold, and agreed by Lord Justice Nugee and Lady Justice King.
Noting that the Court can depart from retained EU case law, but must apply the same test as the Supreme Court would apply in deciding to depart from its own case law” [119], Nugee LJ supports Arnold LJ’s reasoning and concludes "there does appear to be a divergence (surprising as this may seem to our eyes) between on the one hand the approach adopted by the OHIM/EUIPO and the General Court in Ghibli and later cases, and on the other the position of the Court of Justice in Budvar which suggests that the question is not regarded as settled at European level; and the wider context, the objectives of the legislation and practical considerations all suggest that the better view is that the proprietor of the earlier right need only be aware of the use of the later mark, not of the fact of its registration.
"In those circumstances I am persuaded that this is indeed a case where we can and should exercise the new freedom to depart from retained EU case law as Arnold LJ suggests.” [122]