Trade Mark Law & Practice at a Glance

UKIPO UPDATE

Rights of representation at the UKIPO – update

The UKIPO has moved to a more proactive approach in enforcing Address for Service (AfS) requirements. Applications without an effective address for service are now treated as withdrawn. A dedicated AfS team has been established which includes an email address to raise any concerns about an applicant or representative: AFS@ipo.gov.uk.

Guidance and processes for banning unregulated representatives has also been updated. The UKIPO has the power to prevent an unregulated agent from acting as a representative where they are found guilty of misconduct. Changes include clarifying the key differences between regulated and unregulated representatives, detailing how to complain about an unregulated representative, and promoting the benefits of using regulated professionals.

As a reminder, it is particularly important to ensure there is a UK AfS for UK designations of International marks given the changes that have come into place with regard to serving of documents in inter partes proceedings at the UKIPO. The UKIPO’s previous update in this regard can be seen here.

One IPO Transformation programme ongoing

The scheme that is set to overhaul the tribunals and opposition system at the UKIPO is open for feedback from users. An update was published at the beginning of the year and estimates that the new trade mark, designs and tribunal services will be launched in late 2025 as planned. More details can be seen here.

UK overseas intellectual property attaché network

The UKIPO provides help and advice through IP liaison officers in a number of countries around the world including in South East Asia, Latin America, North America, Gulf states and India. The liaison officers work with the local UK Department for Business and Trade and Foreign, Commonwealth and Development Offices to provide support for UK businesses seeking advice on local IP matters. Contact details can be found here.

Meta launches new IP reporting centre

Meta (which runs Facebook, Instagram and WhatsApp) has adapted its Brand Rights Protection monitoring tool to include machine learning capabilities. This will make it easier for business owners to view and manage possible IP infringement across the platforms. Any brand can apply for access to Brand Rights Protection provided it complies with a short list of requirements. Details of these are here, along with more information.

EUIPO UPDATE

New EU Geographical Indication rules

New regulations on Geographical Indications (GIs) for wine, spirits, agricultural products and traditional specialities entered into force on 13 May 2024. The new regulation improves the existing system by introducing a single legal framework and shortened registration procedure, recognising sustainable practices and increasing protection of GIs as ingredients. Full details here.

Avoiding duplicative IDs

A reminder from the EUIPO to avoid creating duplicative IDs on the European Union trade mark (EUTM) register. When filing an EUTM, check if the applicant already exists in the database and if so, select the existing ID. This makes it easier for applicants and representatives to monitor and search their portfolios of trade marks and designs. There is no need to create a new ID if there are minor differences in the name or address. For more details see here.

SME Fund

This grant scheme is designed to help EU-based small and medium sized enterprises protect their IP. The SME Fund 2024 received over 15,000 applications and over 12,000 grants were awarded, with Spain being the country with the most applicants. More information here.

Acquired distinctiveness guidance

The EUIPO has provided helpful guidance on compiling persuasive evidence of acquired distinctiveness, referencing language considerations, structure of submissions and the weight of primary/secondary evidence. Full details can be seen here.

DesignView Image Search expanded

As of 6 May 2024, users can now search visually similar designs on the EU national and regional IP offices registers – covering more than four million designs. More information here.

WORLDWIDE UPDATE

Qatar joins Madrid Protocol

From 3 August 2024 the Madrid Protocol will enter into force in Qatar. The Madrid Protocol will cover 131 countries and offers a cost-effective way to obtain trade mark protection in multiple countries.

Japan and South Korea to recognise letters of consent

The newly amended Korean Trade Mark Act applies to all pending applications filed prior to the effective date of 1 May 2024. This excludes situations where the two marks in question are identical and cover identical goods or services. Similarly, Japanese trade mark law has been revised to allow letters of consent in some circumstances from 1 April 2024, although supplementary evidence to convince the examiner there is no likelihood of confusion must also be submitted.

Trinidad and Tobago joins Global Brand Database

The Global Brand Database now includes the national register of Trinidad and Tobago, adding over 57,000 records. 81 countries are now covered by the database.

New rules on Geographical Indications in China

An upgrade to the existing protection of Geographical Indications came into effect on 1 February 2024. The measures work to better define the registration, administration and protection of both geographical indications and collective/certification marks in a move that hopefully makes the procedure clearer for rights holders.