Law and practice snippets: October 2024
An update on this month’s practice points from our Law and Practice Committee - including an interesting High Court judgment involving collective marks, and updates from the UK IPO and WIPO.
News of note
UK IPO – Statements of grant of protection on international designs designating the UK
After successfully trialling a move to issuing statements of grant for international designs designating the UK since February 2024, the UK IPO has now adopted this approach as standard practice.
The feedback received by the Office indicated that customers found the statements useful for providing evidence and certainty that the international design registration has been accepted in the UK.
In addition, the UK IPO has also issued a general statement of grant that applies to all relevant international designs which were accepted before the trial commenced. The general statement of grant of protection is available to download in the full update, click here to access it.
UK IPO – New guidance on notifying the UK IPO of court cases
On 3rd September 2024, the UK IPO issued updated guidance regarding the notification of court cases involving registered IP rights.
The new guidance provides detailed information on how and when to notify the UK IPO of cases involving patents, trade marks, supplementary protection certificates and registered designs.
This update comes in response to the UK IPO's estimate that only about 20% of the 200-250 relevant cases each year are currently being reported.
Under the Civil Procedure Rules, legal professionals are obligated to inform the IPO of such cases. This ensures that any potential changes to the IP register are accurately reflected and allows the IPO to engage in cases where appropriate.
The guidance includes information on the scope of notification, who is responsible for the notification, timing of notification, the documents required and the notification process.
Click here to read the guidance
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 monthly basis to provide an indication of how the Office is performing against its targets.
The latest figures for September 2024 show that 90% of trade mark examination reports are issued within 8 working days (or 9 days for international trade marks), which is within the UK IPO’s target of 10 working days.
For inter-partes hearing decisions, the timescale for issuing decisions has reduced slightly from previous months, down to 9 months and 25 days. This is still significantly longer than the UK IPO’s target timescale of 3 months, but as previously reported by CITMA, the UK IPO does not expect to be in a position to issue decisions within its target timescale until 2026.
Click here for more information
UK IPO tribunal – Criticising other party’s evidence in final submissions
Practitioners may have noticed a paragraph which earlier this year the IPO tribunal began including in letters reporting receipt of the other party’s evidence. The paragraph warned as follows:
If you reserve specific criticisms of the other party’s evidence until final written submissions or at the hearing, and the hearing officer considers that this will cause unfairness to the other side, your submissions may be given reduced or no weight, or the proceedings may be delayed with consequences for costs.
This caused concern amongst CITMA members as to what was included by the term “criticism” and what would be considered “unfairness”.
The inclusion of the paragraph in question had been precipitated by the judgment of the Supreme Court in December 2023 in Tui v Griffiths [2023] UKSC 48 . The Supreme court concluded at [70](i):
“The general rule in civil cases, as stated in Phipson, 20th ed, para 12-12, is that a party is required to challenge by cross-examination the evidence of any witness of the opposing party on a material point which he or she wishes to submit to the court should not be accepted. That rule extends to both witnesses as to fact and expert witnesses.
The judgment in Tui v Griffith was considered earlier this year by one of the IPO’s principal hearing officers Allan James in the Vape Bars/Diamond Mist case . Mr. James concluded at [50] of his decision
In my view, the line to be drawn is between challenges to the sufficiency of the evidence and new last minute submissions that the narrative evidence of a witness with first-hand knowledge of the facts should be given less weight than it merits at face value because it is untrue or inaccurate. [Emphasis added.]
This should give considerable comfort to practitioners as to how the IPO’s hearing officers will apply the principles set out in Tui v Griffiths. However, for the purposes of additional certainty and clarity on this important issue, CITMA’s L&P committee has been requesting the IPO to issue express guidance, preferably in the form of a TPN. The IPO is currently considering L&P’s requests.
Feedback requested by the UK IPO
A reminder that the UK IPO has asked for input and feedback from CITMA members on the following matters:
- Amendments to the Manual of Trade Mark Practice: the UK IPO has asked for input from members on any sections of the manual which it should prioritise for review and amendment. Suggested changes may relate to the structure and/or content of sections of the manual.
- State of incorporation on trade mark filings: the UK IPO has asked for feedback on the requirement to include information on not just the applicant’s country of incorporation for trade mark filings, but where relevant the state of that country in which the applicant is incorporated.
The Law and Practice Committee welcome any input from members in relation to the above, which it will share with the UK IPO. Please send any suggestions or comments to [email protected], marked for the attention of the Law & Practice Committee.
EUIPO – CP15 Comparison of goods and services
The L&P Committee’s EUIPO Working Group have reviewed and provided feedback on CP15 relating to “Comparison of goods and services: treatment of terms lacking clarity and precision and common interpretation of Canon criteria and other factors”. A response was submitted by the Working Group in September 2024 and further updates will be reported to members when CP15 is finalised.
WIPO – Madrid Working Group
The L&P Committee’s Madrid Working Group meet regularly to discuss issues relating to the Madrid system and to raise issues with the UK IPO. The Working Group has composed a wish-list of suggested changes which would improve the user experience of the Madrid system.
The most important change requested relates to the issuance of Statements of Grant by all Contracting Parties on the basis that users would find this useful for enforcement purposes.
Other items on the wish-list relate to the ability to add subsequent designations before a registration number is provided by WIPO and for clarity on certain dates, in particular registration dates for calculating non-use vulnerability periods. Follow up discussions on the wish-list are scheduled. The option of e-filing of IRs at the UK IPO has also been discussed and is being considered as part of the UK IPO’s transformation project.
Additionally, to continue to inform and help shape the future of the Madrid System online services, WIPO is inviting users to join a Madrid System User Group. You can sign up to the Madrid System User Group here.
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
WIPO – 2025 version of the 12th edition of the Nice Classification
A new version of the twelfth edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Classification”) will enter into force on 1st January 2025. The International Bureau of WIPO will apply the 2025 version to any application received by the Office of origin on or after 1st January 2025, and to any application received by the International Bureau after the two- month time limit referred to in Article 3(4) of the Protocol. Further information is available in WIPO’s information notice.
WIPO – New classification helpdesk
WIPO has launched a new classification helpdesk to provide users with guidance on complex classification issues or questions relating to innovative products or services. The helpdesk allows users to receive rapid feedback from classification specialists. Click here for the full update and link to submit queries to WIPO
Cases of note
The Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v Fontana Food SE [2024] EWHC 2311 (Ch)
The Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (“The Foundation”) owns a UK collective mark, HALLOUMI in class 29 for cheese. In September 2021, Fontana Food AB (“Fontana”) applied to register the marks GRILLOUMI in class 43 and GRILLOUMAKI in classes 29 and 30. The Foundation opposed under Sections 5(2)(b) and 5(3) of the UK Trade Marks Act 1994 and the oppositions were rejected by the UK IPO and the decision appealed by the Foundation to the High Court.
The case includes interesting discussion on the assessment of similarity of goods and services. Although some restaurants were found to be responsible for providing the goods, such as cheese, in the restaurant, the Court considered that the average consumer would be unlikely to assume that any cheese served in a restaurant had originated from the same undertaking as the restaurant services. Therefore, there was only a low degree of similarity between the earlier mark’s goods and the services applied due to the shared channels of trade and complementarity.
In considering the signs, the Court agreed with the IPO’s findings that the earlier mark was only weakly distinctive as it is unlikely that the member of the public encountering the word “HALLOUMI” on cheese packaging would have gained any appreciation that “HALLOUMI” was a collective trade mark. The Court therefore agreed with the IPO’s conclusions that there was no likelihood of direct or indirect confusion between the two signs.
Considering the claim of reputation, although HALLOUMI had a small to reasonable reputation amongst trade consumers, there was no reputation amongst the general public as a collective trade mark. The Court again agreed with the first instance decision that, on account of the differences between the goods and services, the reputation and distinctiveness of HALLOUMI as a collective mark are insufficiently strong for the claim on unfair advantage to succeed.
The High Court found that the Hearing Officer had correctly determined that there would be no risk of confusion and no unfair advantage accruing to Fontana and no detriment to the Foundation’s collective mark. The Court upheld the first instance decision and refused the appeal.
Read the full judgment: https://knyvet.bailii.org/ew/cases/EWHC/Ch/2024/2311.html