Trade Mark Law & Practice at a Glance – November 2024

UKIPO, EUIPO & other jurisdictions

UKIPO UPDATE

IP Advance launched

The UKIPO has launched IP Advance, a new financial support scheme for SMEs.  It is a tiered funding programme that offers advice and support to businesses to understand their IP and develop and help implement a tailored IP strategy.  England, Scotland, Northern Ireland and Wales will each administer IP Advance themselves.  For more information see here.

Notifying the UKIPO of a court action

The UKIPO has published guidance on when and how to notify them of a court action.  Rule 63.14(3) of the Civil Procedure Rules sets out an obligation to serve documents to the UKIPO in certain cases involving registered IP rights.  Not doing so may have a negative impact on the case.  The guidance serves as a reminder of the obligations and practical tips as to how it should be actioned.  For example, documents should be sent via email to CPRnotification@ipo.gov.uk, not by post.  More detailed information here.

UKIPO website now in Welsh

The UKIPO has launched a bilingual website as part of their Welsh language commitment. Visitors to the UKIPO website will now see that it is possible to view the home page and main navigation page in either English or Welsh.  It completes the first phase of the UKIPO’s programme to provide digital information and services in Welsh.  More here.

Extensions of UK trade marks abroad

The UKIPO has updated its online fact sheets relating to countries where an extension of your UK trade marks might be possible including Bermuda, Samoa and Jersey.  More information can be seen here.

Further warnings about misleading invoices

The UKIPO has issued a fresh warning to trade mark owners to be extra vigilant as to the invoices they process and pay.  The office has issued examples of misleading invoices, published a list of names currently being used by the unsolicited organisations and continues to update its guidance.  If you are at all unsure as to whether an invoice is genuine, contact the UKIPO directly or your trade mark attorney for guidance.  Further information can be found here.

EUIPO UPDATE

Misleading EUIPO invoices – three found guilty of fraud in Germany

On 24 September 2024, a German court found three individuals guilty of sending misleading invoices to EUIPO customers. Each was sentenced to 1 year 10 months imprisonment, suspended with a three-year probation period.  They had wrongfully received payments of around €200,000 from fake invoices resembling official fee invoices.  While this decision hopefully makes good progress to deter these companies and clamp down on illegal activities, it serves as a reminder to carefully check any communication and report anything suspicious to an official body or trade mark attorney.  The full story can be found here.    

New senior appointments at the EUIPO

The EUIPO has announced a new President of the Boards of Appeal and Deputy Executive Director.  The new President hopes to further enhance the quality and consistency of the decisions of the Boards of Appeal while the new Director hopes to bring a fresh perspective, following on from her previous role as President of the Polish Patent Office.  More information here.

WORLDWIDE UPDATE

New rules for drafting and filing trade mark applications in Ukraine

In September, new rules for the registration of trade marks came into force in Ukraine.  The provisions align with the requirements in the EU which contributes to the harmonisation of Ukrainian legislation with EU legislation, giving more scope for applicants to protect their IP while making the process more standardised.  More details of the changes can be seen here.

Cambodia introduces new recordation system

Cambodia launched its Intellectual Property Rights Recordation System (IPRRS) which allows easy access to data for customs officers, and so supports enforcement efforts against counterfeit goods. More information here.

2025 version of Nice Classification to enter into force on 1 January 2025

The notice regarding the 2025 version of Nice Classification was released via WIPO on 16 October 2025.  Details here; the version is already available to view here.

Yemen introduces online trade mark procedures

Services including publication, opposition, recordals of assignment and recordals of change of name and address are now available online, as of early October 2024.