Trade Mark Law & Practice at a Glance

UKIPO, EUIPO & other jurisdictions

We regularly review changes to trade mark law and practice at the UKIPO, EUIPO and in other jurisdictions. Please feel free to contact your usual GJE contact if you have questions on any of these changes or how they might affect specific cases.

UK UPDATE

Address for Service change comes into effect

Following on from the UKIPO’s published guidance relating to address for service, from 1st January 2024, all new proceedings relating to UK rights created from EU-wide rights following Brexit require an address for service that is in the UK, Gibraltar, or Channel Islands. More information here.

CITMA launches new hub for IP in the fashion industry

The Chartered Institute of Trade Mark Attorneys (CITMA), launched the hub on 25 January 2024 to provide a wealth of helpful guidance and worked examples to those in the fashion industry to promote the prevalence of IP in this sector.

NatWest Group introduces new lending proposition for IP-rich businesses

The offering, in conjunction with the IP valuation firm Inngot, will support businesses to unlock their full potential by leveraging the value of their IP to access funding. Start-ups are likely to be the main beneficiary here, using non-tangible assets as loan security. More information from NatWest here.

EUIPO UPDATE

Launch of new Mediation Centre for IP disputes

The EUIPO launched its Mediation Centre and online Alternative dispute resolution (ADR) platform on 22 November 2023. ADR services for IP disputes are to be provided free of charge. Services including mediation, conciliation and expert determination are on offer to all parties involved in inter partes proceedings before the EUIPO at second instance. SMEs may also request ADR for first instance proceedings (oppositions, cancellations and invalidities) with a gradual extension to all users during 2024 and 2025. More information available here.

EU design reform deal

The European Council and the European Parliament have reached a provisional agreement on the revision of both the directive for the legal protection of designs and the regulation on Community designs. The aim is to facilitate the protection of industrial designs and adapt EU law in this area to the challenges of a digital and 3D-printing world.  In particular, the provisional agreement frames the scope of the directive, clarifies the rules of the ‘repair clause’, sets the fees for registering a design and adjusts the transposition period for the directive on design protection.

The provisional agreement now needs to be endorsed and formally adopted by both institutions, and implementing and delegated acts are expected to enter into force by the end of 2025.  More information can be found here.

High application rate for 2023 SME Fund

The EUIPO received almost 35,000 applications to the SME Fund in 2023 to access reimbursement for some IP services. The scheme is set to continue into 2024 and covers services such as clearance searches and filing applications both at the EUIPO and WIPO. More information here.

WORLDWIDE UPDATE

WIPO – 2024 version of the twelfth edition of the Nice Classification comes into force

A new version of the twelfth edition of the Nice Classification entered into force on 1 January 2024 and applies to any applications received by the office of origin or by WIPO on or after that date.

USPTO – New trade mark search system launched

On 30 November 2023 the USPTO launched a new cloud-based trademark search system. The system introduces options for more complex searching with a simpler interface. More information is available here.

China enters in to the Apostille Convention

China became a member of the Apostille Convention on 7 November 2023 which means that documents apostilled by their Ministry of Foreign Affairs will be recognised in all contracting states of the Hague Convention, replacing the lengthy and often costly legalisation process in individual states. More information here.

ICANN release new tool to request identification of domain name registrant

It has become difficult to identify registrants of domains with the increase of data privacy introduced with GDPR. To address the challenges this poses to rights’ owners, ICANN launched the Registration Data Request Service (RDRS) at the end of 2023 to provide a consistent and standardised approach to handling requests for non-public data relating to generic top-level domain (gTLDs). The service is described as a “free, global, one-stop shop ticketing system that handles non-public gTLD registration data requests”. The release of information is not guaranteed and is a voluntary service (so registrars may not sign up) but will hopefully help the enforcement of trade mark rights by identifying registrants of potentially conflicting domain names.