Law and practice snippets: June 2024
An update on this month’s practice points by our Law and Practice Committee.
News of note
UK IPO Rights of Representation Update
The UK IPO has published a summary confirming its increased checks on addresses provided in trade mark applications and its new process for reporting misconduct by unregulated agents. Further detail is available here and includes the update on its complaints procedure for reporting ineffective AFS and contact details for reporting details and evidence.
A recent update by CITMA can be found here.
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 of applications and registrations subject to proceedings
The Law and Practice Committee has provided feedback to the UK IPO on a draft TPN regarding the filing of restrictions of specifications.
The UK IPO is seeing an increase in the number of unacceptable TM21Bs filed during opposition proceedings and is issuing guidance for parties, setting out the Tribunal’s key considerations when assessing whether to accept proposed specification restrictions. The TPN is expected to be finalised in the coming weeks.
Tribunal timescales
The Tribunal section is currently issuing decisions approximately 25 weeks from completion of proceedings. The UK IPO are taking steps to improve the timescales, but do not expect to reach the service standard target of 12 weeks until late 2026.
Review of Manual of trade mark practice
The UK IPO are conducting a review of the Manual of trade mark practice and have asked for input from members on any sections of the manual which it should prioritise for review and amendment.
The Law and Practice Committee will be feeding back to the UK IPO with suggestions and comments, and welcome any input from members in this regard. Suggested changes may relate to the structure and/or content of sections of the manual.
Please send any suggestions or comments to [email protected], marked for the attention of the Law & Practice Committee.
State of incorporation on trade mark filings
The UK IPO have asked for feedback on the requirement to gather information on the Country of Incorporation for trade mark filings. Any feedback on this point should be provided by 28th June 2024 if possible, and can be shared with the IPO via the Law and Practice Committee.
Please send any comments to [email protected], marked for the attention of the Law & Practice Committee.
Sharp practice
The UK IPO have confirmed that the data processing in its intelligence hub is paused due to GDPR issues, but that the IPO are able to assist with reporting cases to Trading Standards, where relevant. The relevant UK IPO team can be contacted directly for assistance, and members are asked to contact the Law and Practice Committee for more information and contact details if they require assistance in this area.
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 – Updated version of CP12 now available
The EUIPO has published an updated version of CP12: Evidence in trade mark appeal proceedings.
The update follows information received under the Maintenance of Common Practices sub-project regarding a new implementation by one MS IPO and changes to the formats of evidence accepted by several MS IPOs.
As a result the overview of implementations table and acceptable formats of evidence table have been updated.
EUIPO – Publication and implementation of CP14
CP14 Common Practice (Trade marks contrary to public policy or to accepted principles of morality) provides common understandings of the concepts of public policy, accepted principles of morality and other related concepts, as well as common criteria for the assessment and examples to illustrate the criteria identified.
The CP is the outcome of consultations and contributions from EUIPN stakeholders over the past two years, including input from CITMA representatives. The release of the Common Communication on 19th April 2024 signals the beginning of the 3-month implementation period by Member State IP Offices.
Read the EUIPN’s update on the publication.
The CP14 Common Practice is available to download on the EUIPN website.
WIPO – Qatar joins the Madrid Protocol
The Madrid Protocol will enter info force in Qatar on 3rd August 2024.
National trademark holders in four – Bahrain, Oman, Qatar, and the United Arab Emirates – out of the six countries that make up the Gulf Cooperation Council can now use the Madrid System to secure cross-border protection of their brands. Read the full update here.
Cases of note
Louis Vuitton and Aina Yang (EU Cancellation No C 57 137)
The Opposition Division previously rejected an opposition by Louis Vuitton based on likelihood of confusion against a later mark which it considered to be similar to its monogram mark.
Louis Vuitton then filed an invalidity action, again based on likelihood of confusion, but also including grounds relating to reputation.
The EUIPO did not accept a claim of res judicata by the trade mark owner, in particular because the opposition proceedings had not included grounds relating to Article 8(5).
In reaching its decision in the cancellation, the EUIPO accepted that Louis Vuitton had made genuine use of the mark, that the LV mark enjoyed a reputation, and that consumers would make a link between the marks. Click here to download the full decision.