Law and practice snippets: February 2023 

15th Feb 2023

An update on this month’s practice points by our Law and Practice Committee, including updates on an upcoming Practice Amendment Notice, the new EU filing form and WIPO changes.

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News of note

New TPN

A new Tribunal Practice Notice (TPN) was issued on 25th January 2023 concerning contentious proceedings affecting UK trade marks and designs which do not have a valid UK address for service, that is, an address for service in the UK, Gibraltar or Channel Islands.

The TPN is available here.

Working with the registries

Via the Law and Practice Committee, 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 upcoming PANs

The UK IPO is currently preparing new PANs (Practice Amendment Notices) relating to the “Practice for raising bad faith objections at examination stage” and “The classification of non-fungible tokens (NFTs), virtual goods, and services provided in the metaverse”. 

The Law and Practice Committee will provide comments to the UK IPO on these matters this month and further updates will follow when the PANs are available.  

We meet with the UK IPO regularly. If you have any questions or feedback for the UK IPO relating to law and practice, including any items you would like to add to the ‘wish list’ for consideration as part of the digital transformation project, please email tm@citma.org.uk marking it for the attention of the Law & Practice Committee.  

International updates

EUIPO – New EU trade mark filing form

From 1st February 2023 the new electronic form for EU trade marks replaces the 5-step Form and Advanced Form for trade marks. 

The form has been available since August 2022, but now replaces the older forms.

Features of the new form include customisation options allowing you to tailor your filing experience, a new design, faster goods and services management and enhanced security.

Read more about the new form here.

WIPO – Recent changes to the Madrid System

From 1st February 2023, WIPO implemented several changes to the Madrid system.  The changes relate to the following:

  • The representation of colour marks;
  • Colour claims in international registrations;
  • Filing of non-traditional trade marks, such as sound, motion and multimedia marks;
  • Representation of earlier rights in provisional refusals; and
  • Communication with WIPO.

Regarding communications with WIPO, it is essential that users of the Madrid system provide an email address to ensure all communications related to international applications and registrations are received electronically.

Users can submit or update an email address via eMadrid using “Change Holder Details” or “Manage Representative”. 

Full details of the recent changes are available here.

China – Proposed Changes to Law

On 13th January 2023, the China National Intellectual Property Administration (“CNIPA”) published its draft for the 5th amendment to the Chinese Trademark Law.  The proposed changes include:

  • Regulation on trademark bad faith filings.
  • Establishment of credit and good faith in the field of trademarks.
  • Emphasis on the obligation of trademark use.
  • Strengthening of well-known trademark protection.
  • Forbidden of repeat trademark registration.
  • Improvement on trademark examination and enforcement procedures.
  • Trademark infringement related to e-commerce activities.

The Law & Practice Committee have formed a working group to discuss the proposed changes with a view to preparing submissions before the deadline of Monday 27th February 2023. 

CITMA members are encouraged to contact local counsel for further advice.

Any comments on the consultation can be provided to tm@citma.org.uk marked for the attention of the Law & Practice Committee.

India – Applications to be treated as abandoned

On 6th February 2023 the Controller General of Patents, Designs and Trade Marks (“CGPDTM”) in India published a list of almost 190,000 trade mark applications that will treated as abandoned in 30 days unless submissions are made to show that steps have been taken to keep the application alive.

The applications that are impacted are those which have either:

  1. Received objections at examination and no reply has been filed; or
  2. Been the subject of a third-party opposition and no counter statement has been filed. 

The lists of marks affected have been published by the Office of the CGPDTM and can be found here.

Cases of note

Marks and Spencer Plc v Aldi Stores Ltd [2023] EWHC 178 (IPEC)

A recent decision in a registered design case was found in favour of Marks and Spencer.

The case was in relation to whether Marks and Spencer’s registered design rights had been infringed by Aldi producing and selling a light-up Christmas gin bottle. Aldi highlighted several differences between its product and the earlier designs.

However, in reaching his decision, Judge Hacon stated that the differences were ‘relatively minor’ and therefore did not create in the informed user a different overall impression.

Aldi have indicated it will appeal the decision. 

The full decision is expected to be publicly available soon.

Louis Vuitton Malletier v Norbert Wisniewski T-275/21

In a decision dated 19th October 2022, the General Court of the European Union (GC) has upheld the EUIPO Board of Appeal’s (BoA’s) decision to reject the evidence filed by Louis Vuitton as insufficient in relation to its claim of acquired distinctiveness in relation to its Damier Azur pattern.

Further comment available here, and the decision is available here:

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