Trade Mark Law & Practice at a Glance – February 2025

UKIPO update

Amendment to international trade mark rules now allows partial replacement

A legislation update came into force on 21 November 2024 and allows for partial replacement of UK trade marks with international registrations under the Madrid System. Previously, replacement was only allowed where the international registration covered all goods and services in the UK registration. Trade mark owners 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.

More information can be found here.

Launch of One IPO Search

A new online search tool for UK patents launched on 22 January 2025. This marks a significant step in the modernisation of digital intellectual property (IP) services in the UK, with plans to include trade mark and design services in 2026. More information can be found here, and the search engine is here.

Use of cloned trade marks in the UK post-Brexit

In relation to cloned UK trade marks, use of the mark in the EU before 1 January 2021 can be considered use of the comparable UK right. This means that where the relevant five-year period includes time before 1 January 2021, use in the EU will be considered for the purposes of defending against non-use challenges. Given the time that has now elapsed since Brexit, after 31 December 2025, relying on earlier use in the EU will no longer be sufficient and only use of the registered mark in the UK will be considered in defending against a non-use revocation action. Full guidance can be found here.

EUIPO update

Irregular ‘Change of representative’ requests

The EUIPO noticed a series of irregular ‘Change of representative’ requests made by unauthorised third parties seeking to replace legitimate IP representatives. Immediate corrective measures were taken, and preventative actions have been implemented to address the issue. Members with EUIPO User Area access are advised to regularly review communications received regarding changes to representatives, to stay vigilant, and to contact the EUIPO with any concerns.

More details as to the preventative steps that have been taken are available here and here.

New report into counterfeit detention

A new report, published by the EUIPO and the European Commission, has revealed that law enforcement authorities detained 152 million fake items in 2023, with an estimated value of more than €3.4 billion. The most common fake goods were games, toys, recorded CDs/DVDs, labels/tags/stickers and packaging material, together accounting for almost three-quarters of all the detained products. China continues to be the main source of fake goods entering the EU, with postal and express courier services the most common means of transport. The report aims to provide insight into IP infringement in the EU, by collating data from police, customs and market surveillance authorities from EU Member States.

More information and the full report can be found here.

Worldwide update

Canada – Pilot trade mark cancellation project

Canada’s Opposition Board has announced that, under the pilot, it will send non-use cancellation notices to a randomly selected sample of trade mark owners. The stated purpose of the project is to ensure that the Canadian register “accurately reflects trade marks that are in use, and in association with the goods and services listed in the registration”. The Board has stated that it will send out a total of 200 non-use cancellation notices in the first quarter of 2025. More information is available here.

China: Updates to rules on Collective Marks, Certification Marks and Geographical Indications

With an effective date of 1 February 2024, the regulations aim to establish a comprehensive framework for these types of marks. While these changes are primarily designed for local marks, the principles are likely to also apply to foreign collective/certification and geographical indications in due course, with similar updates expected in the future.

USPTO: Increase in official fees

The USPTO has increased certain trade mark fees, with effect from 18 January 2025 for fees paid to the USPTO and from 18 February 2025 for fees paid to WIPO. These fees aim to encourage more complete applications, which will hopefully streamline examination. There are also increases to post-registration maintenance fees. More details can be found here.

Libya: Increase in renewal fees

Increases to trade mark renewal fees came into effect on 27 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 for the 10-year renewal period. More information is available here.

Republic of Korea: Trade mark opposition period shortened

The Korean Intellectual Property Office has announced the shortening of the opposition period from two months to 30 days, scheduled to take effect from July 2025.

Iraq: Local sub-classification dropped

The Iraqi Trademark Office has removed the local sub-classification of goods and services. Applicants must now specify the serial number corresponding to pre-approved goods or services from the 11th edition of the Nice Classification system. Class headings can no longer be claimed, and specifications departing from pre-approved terms are not permitted. Applications for renewal and recordal must also be accompanied by a reclassification request. This marks a significant shift in Iraq’s practice, with the aim to start bringing it into alignment with international classification standards.

The Bahamas: New trade mark legislation published

The Bahamas has published new trade mark legislation, which includes some significant changes, including that the Nice Classification is now recognised and the protection of service marks is possible for the first time. The Act does not yet have a confirmed date for coming into effect.

Bermuda: New trade mark legislation

Bermuda also anticipates new trade mark legalisation in the months to come, with 1 April 2025 as the predicted commencement date. Changes include a greater scope of registrations – certification marks, collective marks and non-traditional marks, such as sounds and colours will be capable of being protected.

Yemen: Update on fees for additional goods/services

The Yemeni Office has announced the removal of limitations on the number of goods or services that can be claimed per trade mark application. This change allows for greater flexibility, enabling applicants to include an unlimited number of items within a single application. Any goods or services listed beyond the 10th item will still be subject to additional publication fees.