Law and practice snippets: April 2024 

17th Apr 2024

This month’s practice points from our Law and Practice Committee, including an update on tribunal timescales at the UK IPO and new regulations on GIs from the EUIPO.

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News of note

UK IPO Rights of Representation Update

As a result of CITMA’s campaigning and conversations with the UK IPO, the Office has moved to a more proactive approach to enforcing Address for Service requirements and to managing unregulated agents (representatives).

The UK IPO have produced further information about the work they have been carrying out, please click here to read. The UK IPO has also updated its Complaints Procedure page, setting out more clearly that it can handle complaints regarding ineffective AFS. 

In addition to sharing further information on the Address for Service IP rights guidance page to make AFS requirements clear, the UK IPO has launched a dedicated team to handle all AFS requirements and complaints. If you believe that you have encountered an applicant or representative with an ineffective AFS, details and evidence should be sent to [email protected].

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.

Payment of deferred official filing fees

The Committee alerted the UK IPO to the fact that the link on official letters for making a deferred payment on a trade mark application shows an application’s status as ‘abandoned’ if the natural deadline falls on a weekend or bank holiday, and users attempt to pay the fee the next working day.

The UK IPO are now aware of this and have confirmed that the issue will be resolved as part of the Transformation project.

For the time being, the UK IPO have confirmed that such applications are live and the deadline for paying the fee falls over to the next working day, as it would with other official deadlines, though the IPO will need to be asked to issue a new payment “link”.

Tribunal timescales

Due to significant increases in case numbers in recent years, the Tribunal section are currently issuing decisions approximately 22 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.  

UK IPO deadlines during festive period

The Committee discussed the issue of short deadlines set by the UK IPO before or during the festive period. The issue relates mostly to Tribunal deadlines, for example in relation to filing amended forms.

Members have noted that in some cases the standard two-week period for responding expires during the festive period when many firms and clients are unavailable. This can result in correspondence not being attended to in a timely manner or deadlines being missed.

The UK IPO have confirmed that Examiners have discretion to allow a longer period for responding where a short deadline would ordinarily expire during the festive period, and their internal processes and training material will be updated to encourage use of this discretion, where appropriate.   

Potential changes to series application

The Law & Practice Committee provided feedback to the UK IPO’s consultation on the use and examination of series applications. The UK IPO will publish the outcome of this consultation in due course. 

UK IPO Information Centre requests for contact details

When contacting the UK IPO’s Information Centre, members have noticed that they are asked to provide contact details before responses to queries can be provided.

The UK IPO have confirmed that quality checks have resulted in a tightening up on GDPR processes in the Information Centre, such that advisers will now ask for a caller’s name, firm (if relevant) and email address to ensure they are speaking to the correct person before providing case related information or updates.

Sharp practice

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.

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 Transformation, please email [email protected] marking it for the attention of the Law & Practice Committee.

International updates

EUIPO – New regulation on GIs

Following the recent launch of the EUIPO’s new GI hub, the European Council adopted the regulation on geographical indications (GIs) for agricultural products, wines and spirit drinks on 26th March 2024.

The regulation aims to improve protection in the agricultural sector and streamline the process for registering GIs. Search the EUIPO’s GIview database here.

And read the full EUIPO update here.

EUIPO – Publication and implementation of CP13

CP13 Common Practice (Trade mark applications made in bad faith) 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 22nd March 2024 signals the beginning of the 3-month implementation period by Member State IP Offices. CP13 has been developed to assist examiners as well as applicants, claimants and representatives in analysing the possible existence of bad faith in trade mark applications.

Read the EUIPN’s update on the publication here.

And the CP13 Common Practice is available to download on the EUIPN website here.

Cases of note

Compass Comms Limited and Sanctuary Personnel Limited BL O/0050/24

On 25th January 2024, Mr Thomas Mitcheson KC, acting as an Appointed Person dismissed the appeal by the Proprietor/Appellant, Compass Comms Limited in connection with a cancellation proceeding.

The Applicant for cancellation, Sanctuary Personnel Limited had previously failed to invalidate the mark SOCIAL WORK NEWS under sections 3(6) and 5(4) (see decision O/04723/23) and raised a second cancellation under sections (3)(1)(a)-(c).

The Hearing Officer refused to strike out the second cancellation for abuse of process, and the Proprietor appealed to the Appointed Person.

The question raised in the appeal was whether these new proceedings should be struck out because the claims ‘could and should’ have been brought as part of the previous cancellation.

In considering relevant caselaw and noting that the importance of efficiency and economy in the conduct of litigation would suggest a rigorous application of the doctrine of abuse, Mr Mitcheson listed 7 factors which support a more flexible approach before the Registry, including the fact that “there may be special circumstances which are relevant to the determination of the issues”.

The Appointed Person found that, whilst the doctrine of abuse of process does apply to Registry proceedings, the crucial question is whether “a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before”.

In this case, following its first unsuccessful cancellation action, the Applicant for cancellation had itself attempted to register the mark SOCIAL WORK NEWS and was met with absolute grounds objections by the Registry.

No such objection had been raised against the Proprietor’s identical mark, and this apparently inconsistent approach by the Registry was a decisive factor (or “special circumstance”) which tipped the circumstances in favour of the Applicant.

Mr Mitcheson therefore dismissed the appeal and returned the matter to the Registry for the cancellation action to be resumed.

The full decision can be found here.

Lidl and Tesco [2024] EWCA Civ 262

The original claim brought by Lidl against Tesco was for trade mark infringement, copyright infringement and passing off in relation to use of a yellow circle in a blue square.

Tesco partially succeeded in its counterclaim of bad faith, but it was not sufficient to succeed overall, with the High Court finding in favour of Lidl.  

The Court of Appeal judgement was published on 19th March 2024, in which Arnold LJ’s states that is it “necessary to consider the evidence the judge relied upon, bearing in mind that the question for this Court is not whether we would have reached the same conclusion, but whether there was evidence which entitled the judge to make that finding”.

The Court of Appeal upholds the High Court’s finding of trade mark infringement, passing off and bad faith. The finding of copyright infringement was overturned but does not alter the overall outcome for Tesco. 

In supporting Arnold LJ’s findings, Lewison LJ states that the trade mark claim and the passing off claim were at the “outer boundaries of trade mark protection and passing off”.  The full decision can be found here.