Law and practice snippets: October 2022
An update on this month’s practice points by our Law and Practice Committee.
News of note
Update on sanctions on Russia
New sanctions, that specifically include "transactional legal advisory services for certain commercial activity" were placed on Russia by the UK Government recently following the annexation of regions of eastern Ukraine.
"The new legal advisory measures will cover certain commercial and transactional services and hamper Russia’s businesses’ ability to operate internationally".
IPReg is looking into what this means for intellectual property.
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:
Filing receipt queries
We informed the UK IPO that some filing receipts for device marks have inaccurate representations (e.g. grey lines showing around the device). The UK IPO is investigating this and will come back to us.
We also enquired about the automatic inclusion of a “state of incorporation” for private overseas applicants on filing receipts as this can cause confusion. The UK IPO is continuing to investigate this issue and will come back to us.
Responses to examination reports with citations only
The wording in examination reports is clear, but the two options available for responding via the link in the report do not fit and it is more appropriate to use the free-text option at the end to respond to confirm the applicant wishes to proceed as filed, notwithstanding the citation of earlier marks.
We requested if a third option could be included for “request to proceed without amendments”.
The UK IPO said that they understood the problem but coding a third option was probably not possible at this stage. Instead, they are looking to amend the wording in the link and the covering letter, to clarify the options. They will come back to us with their proposed fixes.
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:
Campaign to strengthen our trade mark and IP system
CITMA has launched a campaign to make simple changes to the Retained EU Law (Revocation and Reform) Bill [‘Brexit Freedoms Bill’] which is currently progressing through Parliament.
The changes are with a view of ensuring that only those who are i) appropriately regulated with suitable insurance and ii) who are appropriately qualified with knowledge of the UK system, can represent parties before the UK IPO.
Full details can be found here
You can support the campaign by writing to your MP. Click here to download the template letter
Request from UK IPO for CITMA members to sign up for user testing
Please consider joining the UK IPO user panel, and giving your feedback on the new services offered by the One IPO transformation programme.
Currently the UK IPO is testing its proposed user account which will be linked to all IP rights, and are also looking to speak anyone who regularly uses its litigation services.
The team is always looking for more volunteers for testing, so please do not hesitate to get in touch at [email protected]
Changes to UK IPO bank details
Changes were made to the UK IPO bank details in 2018 and the account re-direction service that has been in place will shortly be coming to an end.
Customers are requested to update their records with the new details by 31st October 2022.
Sharp practice
Together we continue to monitor requests for payments and other examples of sharp practice. Please send any new examples to [email protected], preferably with the envelope as well as the letter, and with confirmation that your client is happy for it to be sent to the UK IPO.
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 is keen to welcome new volunteers to assist with the various projects. If you are interested in volunteering, please get in touch.
Full information on the various Law & Practice working groups can be found here
USPTO implements new deadlines to respond to office actions
With effect from 3rd December 2022, trade mark applicants will have three months (with a possible three-month extension) to respond to an office action issued during the examination of a trade mark application at the United States Patent and Trademark Office (USPTO).
This same change will go into effect for post-registration office actions on 7th October 2023.
UK-China intellectual property newsletter
On the 16th of every month the UK Government publish two newsletters covering recent IP developments in China and in the UK/EU. Updates relate to efforts to target online infringement and strengthen data protection, as well as the move to more trade mark services being made available online by the Chinese Trade Mark Office (“CTMO”).
View the most recent newsletter here
Cases of note
Royal warrants
An update is expected to be issued by The Royal Warrant Holders Association on how the death of Queen Elizabeth II and subsequent change of monarch impacts the ability of Royal Warrant holders to continue to display the Royal Arms.
A Royal Warrant allows a business supplying goods or services to the Royal Household to display the Royal Arms (the coat of arms of the Royal Household) on, or in relation to, its products or services. Whilst often used alongside a company’s trade mark, the function of a Royal Warrant is not to denote origin, but to act as a ‘seal of approval’.
The right to display the Royal Arms is valid for five years, renewable for further five-year periods. Royal Warrants granted by “HM The Queen” became void immediately on Queen Elizabeth II’s death, although holders can continue to use the Royal Arms for up to two years from the date of the Queen’s death.
On a change of sovereign, Royal Warrants are reviewed and updates are now awaited on several points including whether current holders of Royal Warrants will have to reapply, and the extent to which the Royal Household will wish to continue with some or all Royal Warrants.
Royal Warrants granted in the name of the former “HRH The Prince of Wales”, now King Charles III do not automatically become void, but may need to be updated. Further information can be found here
EUIPO Board of Appeal decision on shape of Dior Saddle bag
In March 2021, Christian Dior Couture applied to register a 3D shape as an EU trade mark (EUTM) for various goods in classes 9 and 18.
The application was partially refused on the basis of lack of distinctiveness for goods in classes 9 and 18, including handbags.
Dior appealed, arguing in favour of distinctiveness of its mark. On 5th October 2022, the 2nd Board of Appeal of the EUIPO issued its decision, currently only available in French, refusing registration of the saddle shape in relation to “Bags, handbags, pouches (leather goods), travel kits (leather goods), toiletry and make-up cases (empty)”.
The Board held that that the test of ‘significant departure from the norm or customs of the sector’, which is required for less conventional signs, would not be satisfied here.
Author
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Sharon Mackison
Director & Chartered Trade Mark Attorney, Lawrie IP