Law and practice snippets: November 2022
An update on this month’s practice points by our Law and Practice Committee.
News of note
Known discrepancy in trade mark journal 2022-044
The UK IPO issued notice of a discrepancy in the trade mark journal 2022-44. The date of publication is stated as 3rd November 2022 with the deadline for opposition on 3rd January 2023. This is incorrect.
The applications within this journal were published as expected on 4th November 2022, and therefore the deadline for opposition will be 4th January 2023.
The UK IPO will be contacting the address for service for each application to explain this error. Any earlier rights holders with similar trade marks will also be notified of this discrepancy.
If you intend to submit a TM7a ‘Notice of threatened opposition’ for an application within this journal, you can do this up until 04/01/2023.
However, the UK IPO are encouraging parties to take any action before this date to help keep the online systems running smoothly and prevent any delays in processing requests.
If you have any questions, please contact [email protected].
The UK has joined the World Intellectual Property Organization – WIPO Lex Judgments database
Initially, the 100 most notable UK IP cases will be added, with provision for the database to be regularly updated.
By making information about judicial decisions more accessible across jurisdictions worldwide, the WIPO database aims to strengthen and inform courts’ decision-making processes in IP cases.
It also helps identify where national approaches to common IP questions converge or contrast, making it a powerful tool for research and policy development and a valuable resource for attorneys.
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:
Reporting of publication to WIPO only
We noted that the UK IPO reports publication of UK designations to WIPO only, even where a UK representative has been appointed and has engaged with the UK IPO to deal with an objection prior to publication.
Suspensions of oppositions against IR designations
An update is still awaited from the UK IPO on the suspension of some opposition proceedings against IR designations as a result of the MARCO POLO decision.
The UK IPO is actively working on this difficult issue and an update is expected in the coming weeks.
Other UK IPO related news:
UK IPO consults on legislation changes
The UK IPO is seeking view on legislation that will help change how trade marks are registered and managed in the UK as part of the ‘One IPO’ transformation.
Chartered Trade Mark Attorneys and all trade mark legal professionals are being encouraged to engage with the consultation process which will be open until Friday 6th January 2023.
Read more and access the link to respond online here.
Retained EU law for Intellectual Property
The UK IPO has published a list of retained EU law, as defined in section 6(7) of the European Union (Withdrawal) Act 2018.
The list represents the UK IPO’s current understanding of the legislation that falls within the definition of REUL and is subject to revision and additions.
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 liaison
The EUIPO liaison working group are reviewing Convergence Practice numbers 13 and 14 on bad faith, and trade marks contrary to public policy and morality.
Both CPs have been published and further updates will follow.
WIPO liaison
The WIPO liaison working group continue to work with WIPO on two particular areas of improvement that CITMA feels could be transformational: getting dated deadlines on provisional refusals of protection; and procuring meaningful statements of grant of protection from all countries.
WIPO: Madrid System – Changes to Regulations (Appointing Representatives and Renewing IRs)
A number of changes to the Regulations under the Madrid Protocol came into effect on 1st November 2022.
Appointment of Representatives: It is no longer possible to appoint a representative through a signed letter.
Although it is still possible to appoint a representative using the downloadable forms, WIPO strongly recommends all requests to appoint a representative be made through the eMadrid system.
Renewal: It is now possible to renew an IR as early as six months before the expiry date (up from three months).
WIPO will record the renewal, issue the certificate and notify all designated members as soon as the necessary fees are paid. The renewal date will still match the expiry date.
WIPO strongly recommends that any changes to the IR are made before renewal so ensure all details on the certificate are up-to-date.
Full details can be read on WIPO Information Notice 30/2022.
Cases of note
Lidl v Tesco – Court of Appeal judgment
The UK Court of Appeal issued its judgment on 2nd November 2022, finding that Tesco’s bad faith counterclaim should not have been struck out in an earlier decision by the High Court in June 2022.
The bad faith claim relates to the filing and refiling of a wordless version of a logo trade mark by Lidl.
Tesco has alleged that Lidl’s trade mark registrations were sought as “defensive registrations” with a view to extending protection, rather than with an intention of the mark being used as registered.
The main proceedings will be heard in February 2023.
Author
-
Sharon Mackison
Director & Chartered Trade Mark Attorney, Lawrie IP