Law and practice snippets: July 2023
An update on this month’s practice points by our Law and Practice Committee.
News of note
Updates to the trade marks forms and fees page
On 28th June 2023, the UK IPO updated its forms and fees page, which can be found here. The main changes are:
- Additional headings with supportive text to help users find the correct form;
- Providing links to trade mark search services, such as TM search, track a trade mark and search for UK trade mark classes. This is to encourage users to search before they apply;
- Highlighting to users how to withdraw a trade mark not yet registered. This should avoid users submitting a TM22/TM23 by mistake.
If you have any comments or feedback on this change, please let the IPO know or contact Alicia Evans, Head of Customer Engagement at [email protected].
IPReg update – Ban on provision of legal advisory services to Russians.
On 30th June 2023, The Russia (Sanctions) (EU Exit) (Amendment) (No.3) Regulations 2023 came into force.
IPReg has published an update here, providing a definition of ‘legal advisory services’ and urging attorneys and firms to read the Regulations and seek independent legal advice if they have any specific questions about what the regulations might mean for their practice.
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 discussed the following with the UK IPO:
Designs project
The UK IPO were made aware of a number of registered design cases which were cloned on to the UK Register in error from WIPO, and cases which should have been cloned but were not.
The UK IPO have started to issue letters to parties affected by these errors.
If practitioners are in doubt as to the existence or validity of any design cases on the UK Register as a result of the cloning process, they should contact the UK IPO to discuss.
International updates
EUIPO – Transition to new website on 26th June
The EUIPO fully transitioned to its new website on 26th June, marking the discontinuation of its current website. The two websites have been operating in parallel since 24th April 2023.
One of the major highlights of the new website is its multilingual capabilities with content now accessible in 23 languages through the use of automatic machine translations.
The new website has a variety of new and improved features including tailored content for both IP specialists and non-experts, allowing easy access to relevant information based on users’ knowledge of intellectual property.
In addition to this, in September the website will incorporate a new authentication mechanism and an improved registration process.
These enhancements are anticipated to streamline the user experience further and facilitate more efficient communication and transactions with the office.
More information is available here.
WIPO – Changes to Madrid Monitor for status checks
On 5th July 2023, “Designation Status” became a permanent feature of the Madrid Monitor to enable users to quickly and easily check the status of protection of any international registration each designated member state.
To check the status of a designation users should:
- Go to eMadrid and select “Monitor Your Registration”;
- Enter any search term or international registration number;
- Click on any result to open details of that international registration;
- Refer to the new tab ‘Designation Status’; and
- Click on any record to access a full description of the status, including the full history of all transactions.
CNIPA – Changes to rules on suspension in trademark review procedures
On 13th June, the China National Intellectual Property Administration (“CNIPA”) published an article regarding the regulation on suspension of trademark review procedures.
Practitioners will be familiar with requests for suspension in cases of review or invalidation, pending the outcome of a related proceeding to determine the status of a cited mark.
A notable circumstance in which a ‘stay’ would be applicable is where the status of prior rights must be based on the result of another case being examined by the People's Court or being handled by CNIPA such as invalidation or cancellation.
The suspension will save applicants from re-filing backup applications over and over again and thereby save resources for applicants, CNIPA and courts.
There are seven situations in which the CNIPA should grant a suspension request, and three situations in which the CNIPA may grant a suspension request.
The seven situations where a suspension “should” be granted include:
i) the mark in question or the cited mark is in the process of changing the name or transferring ownership of the registrant, and there is no conflict of rights between the disputed trademark or the reference trademark after the change or transfer;
ii) the cited trademark has expired and is in the process of renewal or the grace period for renewal
iii;) the cited mark is in the process of withdrawal or cancellation;
iv) the cited mark has been revoked, declared invalid or not renewed upon expiry, and the date of revocation, declaration of invalidity or cancellation is less than one year from when the case is heard;
v) an official decision affecting the status of the cited mark is issued and waiting for it to become effective, or the enforcement of the decision is pending re-arbitration;
vi) the determination of the prior right involved must be based on the result of another pending case;
vii) the determination of the legal status of the cited mark must be based on the result of another pending case.
The three situations of “may” include:
i) the cited mark has a pending invalidation, and the holder of the cited mark has been considered as acting in bad faith;
ii) the result of similar cases or result of relevant cases shall be used as reference;
iii) other situations wherein suspension is necessary.
The CNIPA’s article can be found here.
In related news, the latest UK-China Intellectual Property Newsletter published on 5th July, can be found here.
Cases of note
Lidl v Tesco
In a decision issued on 21st June 2023, the High Court granted a final injunction in respect of Tesco’s infringement of Lidl’s copyright in its blue and yellow logo.
This follows the Court’s decision in April and the subsequent consequentials hearing held on 22nd May 2023.
Although the parties agreed some elements of the Court’s Order in advance of the consequentials hearing (including in respect of the trade mark infringement and passing off claims), they remained in dispute over a number of points, including
(i) whether a final injunction against copyright infringement was justified; and
(ii) the time period for compliance with such an injunction.
On point (i), the Court found in favour of Lidl and on point (ii) the Court allowed a period of nine weeks, as requested by Tesco to comply with the order to rebrand its usages of the relevant signs. The full decision issued in June is available here.
Author
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Sharon Mackison
Director & Chartered Trade Mark Attorney, Lawrie IP