Law and practice snippets: January 2023 

24th Jan 2023

An update on this month’s practice points by our Law and Practice Committee. 

computer screen and documents

News of note

Costs TPN

The UK IPO has published a new Tribunal Practice Notice (TPN) on costs. It brings together and updates the guidance from previous TPNs about costs in trade mark, patent and design tribunal proceedings. It also updates the scale of costs. Click here to read more.

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.

We have recently raised the following with the UK IPO:

Suspensions of oppositions against IR designations – TPN expected

An update is expected from the UK IPO on the suspension of some opposition proceedings against IR designations as a result of the MARCO POLO decision.

A draft TPN was provided to the Law and Practice Committee for review and comments were submitted in response to the draft. 

UPDATE: The TPN was published shortly after providing the update. Click here to read it in full

Other UK IPO related news:

UK IPO consultation on legislation changes

CITMA submitted its response to the UK IPO consultation which was open until 6th January 2023 on proposed legislative changes a part of the ‘One IPO’ transformation project.  Further updates will follow on the outcome of the consultation. 

Sharp practice

Together we continue to monitor 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.

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 [email protected] marking it for the attention of the Law & Practice Committee.  

International updates

EUIPO – New rules on submitting evidence

From 1st February 2023 there are new rules on submitting evidence to the EUIPO on data carriers, such as USB flash drives, pen drives or similar devices. 

The changes are intended to reduce delays and to align the requirements for e-communication through the user area. The changes include:

  • Only unlayered PDFs (i.e. standard, static PDF files) are acceptable. Encrypted, executable and/or compressed files are not acceptable;
  • 20 Mb is the maximum size of each individual file saved on the data carrier.

Failure to comply may lead to evidence being deemed not to have been filed.  The changes are part of the recently published Decision No. EX-22-7 which can be read here.

EUIPO Non-Working Days in 2023

The EUIPO has published a list of dates it is not open for the receipt of documents and ordinary mail is not delivered. Full details available here.

WIPO Non-Working Days in 2023

WIPO has published a list of dates it is not scheduled to be open to the public during 2023. The list is available here.

Cases of note

Iceland (country) v Iceland (supermarket) - EUIPO’s Grand Board of Appeal decision

The EUIPO’s Grand Board of Appeal (GBoA) issued its much-anticipated decision in the Iceland trade mark case on 15th December 2022. 

The case relates to invalidity actions brought against the supermarket in respect of registrations for the mark "Iceland” in relation to a range of goods and services in classes 7, 11, 16, 29, 30, 31, 32 and 35. 

The GBoA has found in favour of the country, upholding an earlier decision by the First Board of Appeal.

The decision can be read here.

Louboutin v Amazon – CJEU Decision

The CJEU issued its decision on 22nd December 2022 in response to referrals from the courts in Luxembourg and Belgium.

The CJEU was asked to consider whether and under what conditions the operator of an online marketplace may be found directly liable under Article 9(2) of the EU Trade Mark Regulation 2017/1001 for the display of advertisements of infringing goods. 

In its decision, the CJEU found that Amazon may be liable for infringement based on its “use” of another party’s trade mark in advertising third-party infringing goods displayed on its site. 

The case is now returned to the referring courts for further consideration. 

The decision can be read in full here.

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