Law and Practice snippets: March 2023 

23rd Mar 2023

An update on this month’s practice points by our Law and Practice Committee. 

L and P

News of note

UK IPO – changes to types and file sizes for trade mark applications

With effect from 23rd February 2023, the UK IPO will only accept JPEG or JFIF format for applications for visual trade marks.

The change is to protect the quality of uploaded images and not complying could result in the files being treated as not being delivered to the office.  Full details are available 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.

We have recently raised the following with the UK IPO:

New PANs

The Law and Practice Committee have now provided comments to the UK IPO on two PANs relating to the “Practice for raising bad faith objections at examination stage” and “The classification of non-fungible tokens (NFTs), virtual goods, and services provided in the metaverse”.

Further updates will follow when the PANs have been finalised and published by the UK IPO. 

Planned maintenance by the UK IPO

The Law & Practice Committee raised concerns with the UK IPO regarding two aspects of its “planned maintenance” activity.

The first related to the use of the word “planned” and whether this was always the case, or whether on some occasions the maintenance was in relation to unplanned remedial action.

The UK IPO has now amended the text which appears when the system is offline, and removed references to “Planned.”

The second issue related to the time of day that any planned maintenance was carried out.

The Committee requested that offline periods were not scheduled for the afternoon or early evening when practitioners often need access to online forms to action instructions.

The UK IPO is giving this request more consideration. 

Filing of bulky evidence

The Law & Practice Committee requested clarification from the UK IPO on the definition of “durable” evidence and appropriate file formats, particularly if users want to submit large files as evidence.

The UK IPO confirmed that bulky evidence is typically filed in multiple emails, the current limit for which is 20MB. The UK IPO cannot at present accept File Transfer Protocol (FTP) download links.

As part of the Transformation Project, the UK IPO is considering a portal-based approach where users can upload evidence.

Requirement to use UK000/UK009/UK008/W000 prefixes

A query regarding whether the prefixes UK000/UK009/UK008/W000 are considered part of the official number of UK trade marks was raised by the Committee.

The UK IPO has confirmed that the prefixes are part of the official number, however the Office will not reject forms where the rights referred to are clear. 

Provision of third-party email addresses to facilitate negotiations

In some cases where practitioners need to contact a third party to discuss a potential resolution, it is not possible to locate a contact email address from publicly available information.

The Committee enquired whether the UK IPO can provide this contact information in such cases to facilitate swifter communication.

The UK IPO has confirmed that it will consider whether this can be provided as part of the Transformation Project and will update the Committee in due course.

Sharp practice

We have become aware of misleading emails being received by applicants from IPR Protection.

The emails claim that an application for the recipient’s mark has been filed by a third party and that, as the first to register with Companies House, the recipient has the “first option of registering this brand name”. 

The email also includes costs for UK, EU and international registration and asks for a response within 3 business days, failing which the sender “will approve the other party’s application, which means that they will obtain the trademark rights..”. 

CITMA has notified the UK IPO of these emails.

Together we continue to monitor requests for payments and other examples of sharp practice.

Please send any new examples to [email protected], preferably with the envelope as well as the letter, and with confirmation that your client is happy for it to be sent to the UK IPO.

We meet with the UK IPO regularly. 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.  

International updates

WIPO – Recent changes to the Madrid System

New Service in eMadrid - Cancel an International Trade M ark Registration

You can now request total or partial cancellation of an international trademark registration through eMadrid, following an intuitive process. This service is free-of-charge and replaces downloadable Form MM8. More information available at WIPO.

Japan – Changes to WIPO Fees from 1st April 2023

The Director General of WIPO has received a communication from the Government of Japan withdrawing the notification made under Rule 34(3)(a) of the Regulations whereby the individual fee in respect of a designation of that Contracting Party is to be paid in two parts. 

This communication also modifies the amounts of the individual fee payable in respect of a designation of Japan with effect from 1st April 2023. Full details are available in WIPO’s communication here.

US – New trade mark decisions and proceedings search tool launched

The USPTO launched a new search tool on 17th February 2023, which allows users to filter and sort information to find decisions more easily on: 1) Expungement and re-examination proceedings; and 2) Administrative and sanctions orders. More information on how the tool is used can be found here and the tool can be found here.

Cases of note

Marks and Spencer Plc v Aldi Stores Ltd [2023] EWHC 178 (IPEC)

As reported in last month’s snippets, a registered design case was found in favour of Marks and Spencer. The decision is now available here.  

Oshee Polska Sp. z o.o. v EUIPO R2357/2002-2 and R2356/2022-2

In February 2022, Oshee Polska Sp. z o.o. applied to register the marks METAVERSE FOODS in classes 5, 29, 30 and 32 and the mark METAVERSE DRINK in class 32 before the EUIPO. The applications were both rejected on the basis of lack of distinctiveness. The applicant appealed but was unsuccessful before the Board of Appeal, which issued its decisions on 28 February 2023. The decision in R2357/2022-2 is available in English here.

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