Law and practice snippets: August 2026
An update on recent practice points by our Law and Practice Committee, including updated data on tribunal activity and new examination guidelines for EUTMs.
News of note
UK IPO – Online service added for TM9E (Request for extension to the cooling-off)
The UK IPO has introduced an online version of the TM9E. The PDF form is still available for use, where preferred.
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.
UK IPO – Timescales, volumes and appeals
The UK IPO has published its updated data on tribunal activity up to the end of July 2026. Since our last report in April, the timeframes for issuing a decision following the filing of a TM7 or TM26 have increased slightly to 20 months for a decision from the papers and to 37 months for a decision following a hearing.
The updated figures also show an increase in the timescales for listing of a hearing, now up to 12 months from the date of request, with hearings expected to be scheduled within 17 months from the date of request.
The total volume of cases awaiting decision is down slightly to 759, and the current timeframe for delivery of decisions is nine months from completion of the evidence stage or the hearing date.
More details are available at the UK IPO website and are updated regularly here.
UK IPO – Sharp practice
We continue to monitor fraudulent requests for payments and other examples of sharp practice. Please continue to advise clients of the likelihood of receiving these communications and to report anything suspicious.
Members can send examples to [email protected], marked for the attention of the Law & Practice Committee along with confirmation that the client is happy for the information to be sent to the UK IPO.
International updates
WIPO – Saudi Arabia joins Madrid System
The Madrid Protocol will enter into force in Saudi Arabia on 8th October 2026, bringing the number of members to 117, covering a total of 133 countries. The Government of Saudi Arabia has adopted an 18-month window for provisional refusals.
More detail is available here.
WIPO – Jersey now an independent designation
Previously, designating the UK in an international trade mark application or in a subsequent designation automatically extended protection to Jersey. However, with effect from 1st August 2026, Jersey is now an independent designation under WIPO’s Madrid System and must be selected separately in any applications or subsequent designations. Individual fees will now also apply for renewal of registrations in Jersey.
For international registrations designating the UK, that were recorded before 1st August 2026, WIPO has confirmed the following:
- Registration is protected in the UK on 1st August 2026: No action is required. WIPO will automatically record a Jersey designation for your registration. From that point, the Jersey and UK designations will operate independently of each other.
- The UK refusal period has not yet expired: WIPO will record a Jersey designation only once the UK issues a statement of grant of protection or a final decision granting total or partial protection.
- Registration has been refused or invalidated in the UK: WIPO will not record a designation of Jersey.
More detail is available from WIPO here.
Information is also available from CITMA here.
EUIPO – 2026 edition of the Guidelines for Examination of EUTMs and EUDs
The latest edition of the Guidelines for Examination of EUTMs and registered EUDs entered into force on 1st July 2026. There are several updates relating to examination of applications for registered designs and trade marks, as well as in relation to the examination of design invalidity applications and trade mark opposition practice.
Detailed information on the changes is available here.
In relation to trade mark oppositions, the following changes have been implemented in relation to extensions of time and suspensions:
- For second and subsequent requests to extend a time limit, parties are no longer required to submit supporting evidence when requesting a further extension under Article 68 EUTMDR. However, the request must still be reasoned and based on exceptional circumstances.
- For extensions of suspensions requested jointly by the parties, the new practice means that, after proceedings have been suspended for an initial six-month period, a subsequent joint request for an extension will be automatically granted for 18 months, or up to the maximum of two years under Article 71(2) EUTMDR. The parties can opt out at any time.
The EUIPO has published further guidance specifically in relation to the handling of extensions and suspensions. You can read it here.
EUIPO – Designs – First video and 3D registrations published
Following the implementation of the final stage of the new EU designs regime on 1st July 2026, the EUIPO has published the first EU designs represented using video and 3D images. The Office points to these registrations as “practical examples of how the new rules give designers greater flexibility to present their creations in the way they are actually experienced by users.”
More information is available here.
China – Revised Trade Mark Law effective from 1st January 2027
On 26th June 2026, the Standing Committee of the National People’s Congress adopted the fifth amendment to China’s Trade Mark Law (TML). The changes will take effect from 1st January 2027 and include, amongst other changes, the introduction of motion marks as a registrable trade mark category, recognition of internet-based use as valid use of a trade mark, and shortening of the opposition period from three months to two months.
More information is available in the monthly newsletter published by the UK Government covering IP developments in China. You can read it here.