Law and practice snippets: August 2022
A new monthly feature summarising important practice points that will help keep you up to date, curated by our Law and Practice Committee.
We’ll keep you updated on important trade mark practice news snippets, give you direct access to the conversations we have with the UK IPO and other registries, as well as linking to important cases of note.
News of note
Trade mark system downtime:
UK IPO trade mark services, including applying for a trade mark, will be unavailable on Saturday 3rd and Sunday 4th September 2022.
In addition, the UK IPO trade mark search service will be unavailable on Friday 2nd September. All other trade mark services will still be available on this day.
It will still be possible to file new applications on 3rd and 4th September using the PDF TM3 and submit via email to [email protected].
TPN on costs in proceedings before the Comptroller:
A new draft TPN on costs has been provided to us by the UK IPO for review and comment.
This TPN brings together and updates the guidance from previous TPNs about costs in trade mark, patent and design tribunal proceedings (the previous TPNs being 2/2016, 2/2015, 4/2007 & 2/2000). It also updates the scale of costs.
The Law & Practice Committee will be making comments and suggestions by 2nd September 2022.
UK IPO examination backlog cleared:
The UK IPO is back to its examination timescales for new filings of 10 days. Click here to read more
UK trade marks added to global database:
WIPO’s Global Brands Database will shortly grow by some 3 million trade marks after the UK IPO signed an agreement to add UK trade marks. Click here to read more
The UK IPO Annual Report and Accounts:
These were published on 19th July 2022. Click here to read the report in full
Sign up for UK IPO updates:
You can sign up to receive updates directly from the UK IPO on specific topics of interest to you. Click here to sign up
Working with the registries
Via our Law and Practice Committee and other forums, CITMA meets regularly with the UK IPO and other registries to discuss in detail points of practice and raise important feedback and questions submitted by members.
UK IPO digital transformation project:
We have a ‘wish list’ of features that members have suggested, which we have shared and discussed with the UK IPO at our regular liaison meetings.
This includes discussion and requests on various matters, including extending e-filing options to include new international filings, the option to download electronic certified copies of filing receipts and registration certificates, and the addition of greater search functionality. Click here to read the latest update
The UK IPO is looking for volunteers to support its user testing process. To take part email [email protected].
We have recently raised the following with the UK IPO:
How rigidly the TPN on the limit of 300 pages for evidence is being applied: The UK IPO has confirmed that there is an element of flexibility if there is a clear reason why the page limit has been exceeded.
If you have a case where this is of concern, you can raise this with the UK IPO.
Whether the search fields adopted post-Brexit could be better explained: In particular the ‘Registered at the EUIPO’ and ‘Registered at WIPO’ options. The UK IPO is looking at this and any changes will require testing before going live.
The measures the UK IPO uses for quality control: Current rates are measured to be high for correct acceptances and the UK IPO is always looking at other quality control measures.
Members can use the specific email address for the ‘customer enquiry unit’ ([email protected]) or the customer feedback form is also available on the UK IPO website, to feed back any issues so the UK IPO can review.
Timing of planned maintenance: This includes the most convenient times for maintenance to take place from a practitioner’s points of view and provisions for access to online forms during these down times (in particular TM3 and TM7A).
It is hoped that maintenance will henceforth be carried out in the early morning instead.
Sharp practice: Together we are monitoring requests for payments and other examples of sharp practice.
Please send any new examples to [email protected], preferably with the envelope as well as the letter, and with confirmation that your client is happy for it to be sent to the UK IPO.
Virtual goods and NFTs: The UK IPO is looking to provide guidance. It is liaising with WIPO, which will be working on developing this at a ‘committee of experts’ meeting.
We meet with the UK IPO regularly. If you have any questions or feedback for the UK IPO relating to law and practice, please email [email protected] marking it for the attention of the Law & Practice Committee.
We have recently raised the following with WIPO:
IRs and Mexico: Following issues during lockdown with incorrect late provisional refusals of international registrations designating Mexico, due to the 18-month term being reached without registry timely review, leading to official letters issuing out of time, WIPO has been working closely with the Mexican Registry.
The remaining problematic cases in Mexico from that period are now very few and Mexico is fully committed to accept tacit acceptance of applications if there is no refusal within the 18-month period (bearing in mind it would still be possible to notify refusals based on an opposition after the 18-month time limit).
Tacit acceptance of IRs is particularly tricky in countries with an affidavit of use requirement because it is not clear what the triggering point would be.
There is potential for a similar issue arising for the Philippines and Canada: you might wish to review and challenge any late provisional refusals and check the use requirement calculations where no official letters have issued within the 18-month period.
Cases of note
House of Zana v Zara:
UK opposition decision issued on 3rd August 2022.
The mark House of Zana (series of two logos) has been unsuccessfully opposed by the owner of the ZARA trade mark. The opposition was filed on the basis of 5(2)(a) and 5(3) and failed on both bases.
The opposition decision has attracted significant media attention and has been perceived as a ‘David vs Goliath’ case. The decision contains some very interesting comments on the assessment of likelihood of confusion and enhanced distinctiveness.
Sky v SkyKick:
On 25th July 2022 the UK Supreme Court granted SkyKick permission to appeal the order made by the Court of Appeal on 26th July 2021. Click here for full details
HENRY/RONALDINHO O/246/22:
On 30th March 2022 Mr Geoffrey Hobbs QC issued a decision which is likely to change the long-held UK IPO “famous names” practice. Further news is awaited. Click here to read more
Author
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Sharon Mackison
Director & Chartered Trade Mark Attorney, Lawrie IP