Law and practice snippets: May 2023 

25th May 2023

An update on this month’s practice points by our Law and Practice Committee including an update on Small Claims Track cases and an update on the new WIPO eMadrid system.

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News of note

UK IPO Deposit account updates

The UK IPO recently announced that it would be introducing new digital payment methods and phasing out deposit accounts.

Since then, the IPO received a lot of feedback which it has reflected on and has made the decision to build a deposit account payment option into its new digital services, as part of the wider transformation project.

This means there are no immediate plans to remove deposit accounts while the IPO reviews its payment options going forward.

The UK IPO has confirmed that it does still intend to move away from deposit accounts in the long term, but will now do this in a slower and more targeted way.

At the right time, the UK IPO will be holding user research sessions on payments and would welcome current deposit account holder participation to shape the way forward on payments.

The IPO is particularly keen to hear from any finance team members. Users can sign up to take part in those sessions by emailing: [email protected].

IPReg's regulatory arrangements – upcoming changes from 1st July 2023

IPReg’s Code of Conduct and associated rules are changing following approval by the Legal Services Board. The new regulatory arrangements will come into force on 1st July 2023. Further information can be found here.  

IPEC – Processing of cases filed in the Small Claims Track (“SCT”) from 1st July 2023

On 23rd May 2023, the Chancellor confirmed that the transfer of IPEC Small Claims processing will happen on 1st June 2023. 

From that date, all claims filed either on CE File or in person in London will be transferred to Manchester and case managed by District Judges in the Manchester Civil Justice Centre.

Parties will have the right to apply to have a claim transferred from Manchester to any other court centre which hears IPEC SCT cases, including London.

There is no change to claims filed before 1st June 2023, and the changes do not impact claims filed in the IPEC Multi-Track.

An updated Practice Note will be published as soon as practicable to further explain the new procedure.

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.

Wish-list for UK IPO One IPO Transformation Project

The Law & Practice Committee regularly discuss the One IPO Transformation Project with the UK IPO.

A number of items have been suggested by the Committee and by members, which have been added to a wish-list for consideration.

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.

Sharp practice – UK and EU

Together we continue to monitor requests for payments and other examples of sharp practice. In recent months, we have mentioned misleading emails being received by applicants from IPR Protection, which we have highlighted to the UK IPO.

The Committee is also aware of renewal letters being sent to UK trade mark proprietors by Stern Young & Partners and has received several examples from members. 

The issue of misleading invoices is also prevalent in the EU. Europol, in collaboration with the EUIPO have released a procedure manual to combat this practice. The publication contains the following information:

  • an overview of the key issues when facing a misleading invoice or other payment requests;
  • profiles of the fraudsters behind the scams;
  • tips on how to identify misleading communications;
  • and information on how applicants and IP offices can protect themselves.

Further detail is available here with a link to the full report available on the page.  

Marques is currently collecting examples of fraudulent invoices received by EU trade mark owners.

If members have examples, please send these to [email protected], preferably with the envelope as well as the letter, and with confirmation that your client is happy for the information to be sent to Marques.

For any UK examples, please also continue to send these to [email protected], along with confirmation that your client is happy for the information to be sent to the UK IPO.

International updates

EUIPO – Regulation for geographical indication protection for craft and industrial products

On 2nd May 2023, the Council and the European Parliament reached a provisional deal on the regulation for geographical indication protection for craft and industrial products.

This regulation, when approved, will introduce a new geographical indication (GI) for craft and industrial products with qualities linked to the area of production, for example, Bohemian glass or Limoges porcelain. Read more about the main points of the agreement here.

The provisional agreement reached on 2nd May must now be endorsed and formally adopted by the Council and European Parliament.

The proposal for the regulation was first published on 13th April 2022, and the regulation is expected to enter into force beginning of 2024.

WIPO – New eMadrid system introduced

WIPO has released a new version of Madrid Monitor under its eMadrid digital gateway, featuring a new “Designation Status” tab, to give users a clearer overview of the status of protection in each Madrid System member for any international trademark registration.

What's new?

  • A banner at the top displays the main information: logo, holder, expiration and registration dates and classes of goods and services of the registration.
  • The new “Designation Status” tab helps you identify the status of protection in each designated Madrid System member.
  • If you click any designation, Madrid Monitor will display additional information, including the classes of goods and services registered in that member, with information about all the transactions and the documents related to the designation of that Madrid System member.
  • You can now download a non-official certificate of protection for any designation that has granted protection for particular Nice classifications, by clicking the ‘PDF’ link inside the details for that designation.
  • We have enhanced the “Real-time status tab” by showing transactions from newest to oldest and by clarifying some of their labels.

How does it work?

  1. Go to eMadrid and select “Monitor Your Registration”.
  2. Switch to the new version of Madrid Monitor by clicking the ‘designation status’ hyperlink in the banner at the top of the page.
  3. Enter any search term(s) or international registration number(s) of your choice in the search bar.
  4. Click on a result in the results page to open the detailed page of that international registration.
  5. Start using Madrid Monitor’s new features!

If you would like to give your feedback on WIPO Madrid System’s online services under eMadrid and be involved in the next research activities, you are welcome to join the Madrid System User Group here.

Further information is available here and Access eMadrid here.

UK-China Intellectual Property Newsletter

On the 16th of every month the UK Government publishes a newletter covering recent IP developments in China.
Topics covered in the most recent update include measures to regulate patent agencies and attorneys through credit evaluation, information on requesting accelerated examination for post-grant services, statistics relating to IP litigation in 2022 and many others. Download the most recent newsletter here.

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