Law and practice snippets: June 2025
An update on recent practice points by our Law and Practice Committee, including new guidance following the SkyKick decision, mediation services and examination of EU designs.
News of note
UK IPO – Government maintains UK+ IP exhaustion regime
After thorough review of the intellectual property landscape post-Brexit, the Department for Science, Innovation and Technology (DSIT) has confirmed that the current UK+ exhaustion regime will remain in place, following consideration of several alternative models for managing parallel imports.
CITMA’s update with further detail can be found here.
UK IPO – Update to guidance on objecting to other people's trade marks
The UK IPO updated its guidance on 7th May 2025 to include a new section headed “Timescales, volumes and appeals”. The guidance now sets out the different estimated overall timescales (including serving times, evidence rounds and defence periods but excluding any consequential matters) from filing a claim or defence through to issuance of a decision from the papers or from a hearing.
The guidance also indicates the current volume of cases before the UK IPO, stating there are a total of 787 decisions pending from paper cases and hearings. The UK IPO is expecting to reduce timescales for issuance of decisions back down to six months by July 2027 and to three months by March 2028.
Further detail 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 points of practice and raise important feedback and questions submitted by members.
UK IPO – Updated guidance following SkyKick decision
The L&P committee are working with the UK IPO to provide feedback on a draft PAN following the SkyKick decision. The committee has shared a range of points of view with the IPO and the updated guidance is expected from the IPO in the coming months.
UK IPO – Scam emails and reporting of sharp practice
Several members have reported examples of clients receiving emails from a number of different parties, some of which appear to be from IP attorneys or solicitors who are regulated individuals. The L&P Committee raised this issued with the UK IPO and several examples have also been reported to the Solicitors Regulation Authority (“SRA”). It appears that several websites have been taken down following reporting by recipients.
The UK IPO has updated its website to warn of fraudulent emails and to provide contact details for reporting to Action Fraud and to the IPO.
Further detail on reporting can be found here.
The SRA also continues to publish scam alerts relating to trade marks, including some recent examples here:
- 7th May 2025: Further detail here.
- 23rd May 2025: Further detail here.
Together we continue to monitor requests for payments and other examples of sharp practice. Please do 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
EUIPO – Review of CP17
A first draft of the Common Practice on The Distinctive Character of Slogans has been shared with the L&P Committee and is being reviewed with a view to providing any feedback on behalf of members. A further update will be provided when the document is published by the EUIPO.
EUIPO – Mediation services extended to all EUTM and registered EUD disputes
From 2nd June 2025, parties involved in any inter partes proceedings before the EUIPO, whether first or second instance EU trade mark (EUTM) opposition or cancellation proceedings, or registered EU design (EUD) invalidity proceedings, can request mediation to resolve their dispute in an amicable and effective manner.
Further detail is available here.
EUIPO – 2025 EUIPO Guidelines for Examination of registered EU designs
The latest edition of the Guidelines for Examination of registered European Union designs entered into force on 1st May 2025.
The main changes take account of the following:
- Updated terminology: e.g. change from registered community design (RCD) to registered European Union design (REUD), as well as revised definitions and legal references.
- Elimination of the option to file via national offices and the filing of specimens.
- Removal of the unity of class requirement.
- The possibility for decisions to be taken on surrendered or expired designs, provided the requesting party shows a legitimate interest.
- Clarification on res judicata.
- Extension of priority effects to Article 25(1)(e) and (f) EUDR.
- Modifications to entitlement proceedings.
- Removal of certain fees.
- Changes in the calculation of the basic renewal periods.
More details of all the changes can be found here.
WIPO – New eMadrid (Beta) experience
WIPO has launched a new beta version of eMadrid which is running in parallel with the current eMadrid webpages. From 20th May, users can conduct all transactions under the Madrid System on the new beta version. There is a feedback button on the FAQ and Contact Us pages to provide feedback on specific features, make suggestions and report bugs.
More information is available here.
WIPO – Initial report of the WIPO-ICA UDROP Review
WIPO and the Internet Commerce Association (ICA) released an initial report on 19th April 2025 to shape a formal submission to ICANN relating to UDRP reform. The consultation is open until 27th June 2025.
Further detail can be found here.
Cases of note
SE Bicycles Company Limited v Cashflow Corporation Ltd (O/0439/25)
The UK IPO issued its decision on the above case on 9th May 2025, in which the applicant had applied to register the mark ENERGO in a broad range of goods and services in classes 1, 4, 7, 8, 9, 11, 12, 35, 37, 39, 40 and 42. The opposition was based on 5(2)(b) and 3(6). Applying the principles set out in the Supreme Court’s decision in SkyKick, the Hearing Officer found that the applicant’s mark was applied for in bad faith.
In reaching a decision under Section 3(6), the Hearing Officer stated “Given the sheer size and disparate nature of the applied for goods and services, and the lack of any clarify from the applicant in respect of any reasonable business intention, I am of the view that this finding applies to all of the goods and services applied for. As such, I find that the present ground succeeds in full.” [paragraph 77]