Law and Practice snippets: August 2024

21st Aug 2024

An update on this month’s practice points by our Law and Practice Committee, including a new TPN.

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News of note

New warning on unsolicited invoices

The UK IPO has issued a fresh warning on unsolicited payment requests, with its data suggesting these are up 63% on same period last year. Click here to read more

New Minister for IP

The new Labour Government has revealed the identity of the minister with responsibility for IP, with Feryal Clark MP appointed as Parliamentary Under Secretary of State for AI and Digital Government. Click here to read more about the appointment

Working with the registries

Via the Law and Practice Committee, CITMA meets regularly with the UK IPO and other registries to discuss points of practice and raise important feedback and questions submitted by members.

New TPN on Restricting specifications subject to Tribunal proceedings

Following the UK IPO’s concerns about increasing numbers of TM21Bs filed during proceedings considered to be unacceptable, it issued a Tribunal Practice Notice (TPN) on 17th July 2024 with guidance for trade mark owners and practitioners.

The TPN sets out the Tribunal’s key considerations when assessing whether to accept proposed specification restrictions, including: restrictions must be clear and precise; restrictions should identify sub-categories of goods/services, not a characteristic; and restrictions must make sense within the context of the specification.

The TPN also includes guidance on addressing and resolving objections to unacceptable restrictions. Click here to read the full TPN

The TPN incorporates a number of the CITMA Law and Practice Committee’s amendments proposed during the consultation stage earlier this year.

New TPN on new tribunal powers to make references to higher courts on points of assimilated law

From 1st October 2024, the implementation of section 6A of the European Union (Withdrawal) Act 2018 will provide the Intellectual Property Office’s tribunal with new referral powers in relation to points arising on assimilated case law. The Law and Practice Committee is providing feedback to the UK IPO on a draft TPN regarding new tribunal powers to make references to higher courts on points of assimilated law.

The new TPN is expected to be published by the UK IPO by 27th September 2024.

Feedback requested by the UK IPO

The UK IPO has asked for input and feedback from CITMA members on the following matters:

  • Amendments to the Manual of Trade Mark Practice: the UK IPO has asked for input from members on any sections of the manual which it should prioritise for review and amendment. Suggested changes may relate to the structure and/or content of sections of the manual. 
  • State of incorporation on trade mark filings: the UKIPO have asked for feedback on the requirement to gather information on the Country of Incorporation for trade mark filings.

The Law and Practice Committee welcome any input from members in relation to the above, which it will share with the UK IPO. Please send any suggestions or comments to [email protected], marked for the attention of the Law & Practice Committee.

Sharp practice

Together we continue to monitor requests for payments and other examples of sharp practice. Please also continue to send examples to [email protected], along with confirmation that your client is happy for the information to be sent to the UK IPO.

International updates

EUIPO – Mediation service available for EUTM Cancellations

From 1st July 2024, parties involved in EU TM cancellation proceedings will be able to request the use of mediation at any time after the cancellation request in order to resolve their dispute in an amicable and hopefully effective manner.

The mediation service offered by the EUIPO is voluntary, free of charge and can be carried out entirely online via a secure and confidential ADR platform.

The EUIPO Mediation Centre was launched in November 2023 and the launch of the mediation service for cancellation proceedings is part of a phased approach to extend ADR service to all inter partes proceedings. Mediation for designs invalidities and EUTM oppositions will be rolled out in 2025. Click here to read the full update  

WIPO – Guide to trade secrets and innovation

WIPO has published a comprehensive guide to trade secrets which is intended to for a wide audience, including IP professionals and their clients.

The guide is written in seven parts and covers the role of trade secrets in the innovation ecosystem, basics of trade secrets, trade secret management, trade secrets in litigation, trade secrets in collaborative innovation and trade secrets in digital objects. Click here to read the full guide

Cases of note

Lifestyle Equities CV and  others v Royal County Of Berkshire Polo Club Limited and others [2024] EWCA Civ 814 - https://www.bailii.org/ew/cases/EWCA/Civ/2024/814.html

The court discussed at length the principle that “trade marks with a less distinctive character enjoy narrower protection than marks with a highly distinctive character”.  It confirmed that a registered mark’s distinctiveness and therefore its scope of protection is reduced where there is evidence of significant third party use of similar marks in the fields concerned (“crowded marketplace”).  

Importantly, the court also confirmed that co-existence agreements with third parties entered into by a claimant in relation to the asserted mark were relevant to the assessment of the distinctiveness of the claimant’s  mark- [69] 

“In so far as [co-existence agreements] have effects on the relevant market, it may be necessary to take those effects into account. Even if they have no effect on the market, they may give some insight into what market participants consider to be acceptable or unacceptable. Provided that caution is exercised before drawing any conclusion from this, it may be appropriate to take it into account as part of the global assessment of the likelihood of confusion.”  [Emphasis added].

Vinicio SRL and Artessence FZC (EU Cancellation No C 57 137)

The Opposition Division issued a decision on 7th July 2024 in a case which considered the extent of similarity between virtual and real world goods. The earlier mark relied on is registered in respect of classes 3 and 4. The opposition was filed under Article 8(1)(b) and directed against class 3 and some of class 35 of the later application. The Opposition Division noted that the goods covered by the registration in class 3 and most of the goods in class 35, were the real-world counterparts of the virtual goods that were covered by the application; however, this was not per se sufficient for a finding of similarity between the goods and services.

In its decision, the Opposition Division goes on to say “It is not a well-known fact whether it is customary to bring together and offer for sale virtual goods and their real-world counterparts through the same distribution channels.

When the comparison of goods and services involves virtual goods, this implies the application of similarity criteria in novel situations that cannot be regarded as ‘well-known’, at least for the time being. Consequently, it is crucial that the parties provide arguments and evidence showing in which respects the respective goods and services are similar.” 

In noting that there was a lack of any substantive evidence on file to find whether the goods and services at issue are complementary, distributed through the same trade channels or could target the same relevant public, the Opposition Division went on to find that the earlier goods in classes 3 and 4 and some of the contested services in class 35 were dissimilar.  Download the full decision: https://euipo.europa.eu/eSearchCLW/#key/trademark/OPP_20240708_003199946_018790458

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