Law and practice snippets: February 2025
An update on this month’s practice points from our Law and Practice Committee, including important feedback raised with the UK IPO and international updates from the EUIPO.
News of note
UK IPO – Amendment to international trade mark rules to allow partial replacement
The UK has updated its trade mark legislation to allow for partial replacement of domestic trade marks with international registrations under the Madrid System. The amendment came into force on 21st November 2024. Trade mark holders can now:
- Replace their UK trade mark registration with an international registration that covers fewer goods and services;
- Maintain protection for goods and services not covered by the international registration through their existing UK registration.
Full details are available here.
Brexit – Use of cloned trade marks in the UK
For cloned UK rights, use of the mark in the EU before 1st January 2021, whether inside or outside of the UK, counts as use of the comparable UK right. Therefore, where the relevant five-year period includes time before 1st January 2021, use in the EU will be considered for the purposes of defending against non-use challenges. Rights holders should be aware that after 31st December 2025, relying on earlier use in the EU will no longer be sufficient and use of the registered mark in the UK will be necessary to defend against non-use revocation.
For further guidance, please refer to the UK IPO guidance on comparable trade marks here.
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 – Customer service standards for trade mark examination and decisions
The UK IPO publishes an update on customer service standards on a quarterly basis to provide an indication of how the Office is performing against its targets. The latest figures for February 2025 show that 90% of trade mark examination reports are issued within the UK IPO’s target of 10 working days (or 9 days for international trade marks). For inter-partes hearing decisions, the timescale for issuing decisions has increased slightly from previous months, up to 10 months and 10 days. As previously reported, the UK IPO does not expect to be able to issue inter-partes decisions within its target timescale of 3 months until 2026. For ex-parte hearing decisions, currently 90% are issued within 10 working days.
CITMA are aware that, in some recent cases, hearings have been requested by parties and not scheduled by the UK IPO for up to 12-18 months. CITMA have requested a meeting to discuss this with the IPO.
More information on UK IPO standards is available here.
Madrid Designations in the UK – Correspondence issued by the UK IPO
Practitioners may have noticed that, despite being recorded as representative at the UK IPO for a UK designation of an International Registration, correspondence is sometimes sent by the UK IPO to the WIPO representative only. The L&P Committee have raised this as an issue of great concern with the UK IPO, noting that it causes difficulties for the UK representative maintaining up-to-date records. The UK IPO have explained that this is an issue which requires manual intervention on a case by case basis. The UK IPO have not proposed any changes to this strategy for the time being, and members are advised to monitor UK designations for which they are responsible carefully, and be aware that they might not receive UK IPO notification letters, which might have been sent only to the WIPO representative.
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 – Irregular ‘Change of representative’ requests
The EUIPO recently detected a series of irregular ‘Change of representative' requests submitted by unauthorised third parties seeking to replace legitimate IP representatives with fictitious entities. Immediate corrective measures, as well as preventative actions have been implemented to address this issue. Members with EUIPO User Areas are advised to regularly review communications received regarding changes to representatives, and to contact the EUIPO with any concerns.
More details are available here and here.
USPTO – Increase in official fees
The USPTO has increased certain trade mark fees, with effect from 18th January 2025 for fees paid to the USPTO and from 18th February 2025 for fees paid to WIPO. This includes new fees introduced at filing for applications that are incomplete or contain custom identifications of goods or services. These fees aim to encourage more complete applications, which will improve examination efficiency and help reduce pendency. There are also increases to post-registration maintenance fees.
More details are available here.
Libya – Increase in renewal fees
The L&P Committee have been made aware of significant increases to trade mark renewal fees in Libya, which came into effect on 27th November 2024. The changes introduce a substantial increase in renewal fees for foreign trade mark owners to US$2,000 per year, with the option to pay annually or in one lump sum for the ten-year renewal period.
More information is available here.
Republic of Korea – Trade mark opposition period shortened
The Korean Intellectual Property Office (“KIPO”) have announced the shortening of the opposition period from two months to 30 days, which is scheduled to take effect from July 2025.
More details are available here.
Cases of note
SkyKick UK Ltd and another (Appellants) v Sky Ltd and others (Respondents)
On 13th November 2024, the Supreme Court delivered its judgment in the long-running dispute between SkyKick and Sky. The case was initially brought before the High Court by Sky who alleged that SkyKick infringed its SKY trade mark registrations. In response, SkyKick challenged the validity of Sky’s rights on the basis of bad faith, alleging that Sky had employed a strategy of applying for overly broad trade marks for goods and services on which it did not use its marks, or intend to do so. The High Court judge found that Sky had acted in bad faith and that its trade marks were partially invalid. The Court of Appeal subsequently overturned this decision and reinstated Sky’s rights.
The case advanced to the Supreme Court which has reinstated the High Court’s finding of bad faith. As set out in the Supreme Court’s press summary, the Court "unanimously allows the appeal in part," finding that "the High Court was entitled to find that the SKY marks were applied for in bad faith to the extent that it did, and the Court of Appeal was wrong to reverse that finding.”
The UK IPO are reviewing any implications the decision may have on the filing of broad specifications in trade mark applications. The L&P Committee will be working closely with the UK IPO as it considers this matter and providing feedback to represent a variety of members’ views.
More details are available here.
The full decision is available here: https://www.supremecourt.uk/cases/uksc-2021-0181