Law and practice snippets: August 2025
An update on recent practice points by our Law and Practice Committee, including a new international design law treaty, scam emails and use of AI.
News of note
UK IPO – UK signs Riyadh Design Law Treaty
The UK IPO has signed a new international design law treaty, taking steps towards simplifying global design protection for UK businesses and creators.
Once in force, the treaty aims to:
- Limit the information required in applications
- Simplify the requirements for obtaining a filing date
- Provide harmonised timescales for requests for information and responses to design registrations
It will also encourage use of electronic filing and making digital databases publicly accessible. This transparency will help designers to ensure their ideas are original.
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 UK IPO published its Practice Amendment Notice (“PAN”) on 27th June 2025, with the new guidance effective immediately. The much-anticipated PAN clarifies the impact of the SkyKick v Sky Supreme Court judgment on the practice followed by trade mark examiners at the UK IPO when looking at new applications.
More details on the PAN can be found here.
UK IPO – Use of AI note takers and transcribing tools at hearings
The use of AI note takers and transcribing tools during hearings is being reviewed by the UK IPO. There is currently no confirmed policy but the general practice of the UK IPO at present is not to allow the use such tools at hearings.
UK IPO – Scam emails and reporting of sharp practice
The UK IPO are aware of the recent examples of sharp practice, including letters which appear to be from IP attorneys or solicitors who are regulated individuals, and have informed the L&P Committee that it has seen a very significant increase in this type of activity in recent months. The UK IPO are in regular contact with the Solicitors Regulation Authority (“SRA”) and encourages members to report examples to the SRA.
The UK IPO are also issuing stern letters to senders and has also recently updated information on its website with contact details for reporting to Action Fraud and to the IPO.
Further detail on reporting can be found 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
Libya – Update on increase in renewal fees
As reported in February’s edition of Law & Practice Snippets, significant increases in renewal fees in Libya came into effect in November 2024. The changes introduced a substantial increase in renewal fees for foreign trade mark owners up to US $2,000 per year, with the option to pay in one lump sum for the ten-year renewal or to pay in annual instalments. The fee increase has been widely discussed by local attorneys and is considered to potentially be subject to change.
The most recent advice for trade mark owners is to pay only fees which are due at each stage, rather than one large lump sum payment for a ten-year renewal. Members are also advised to be mindful of any grace period payments as it is our understanding that the six-month grace period is only available for the first renewal. Accordingly, local advice is recommended to determine the most suitable renewal strategy, given the dynamic nature of the situation.
WIPO – New eMadrid (Beta) – Default environment from September
Following our previous update regarding the launch of WIPO’s new beta version of eMadrid which has been running in parallel with the current eMadrid webpages from 20th May 2025, WIPO have provided an update on new features incorporated into the system based on user feedback, and advised users that this will become the default environment for managing international trade mark registration transactions from September 2025.
The new eMadrid environment includes a workbench for viewing and managing registrations, and users can check the status of protection and history of transactions, request modifications and share access rights to the information with others.
More information is available here.
Cases of note
Pro Health Solutions Ltd v Prohealth Inc - Appointed Person Decision (O/0559/25)
An appeal decision issued by the Appointed Person (“AP”) on 20th June 2025 has provided some interesting comments on the use of generative artificial intelligence (“AI”) in drafting legal submissions. The appeal related to trade mark registration and invalidity matters, with the Appellant acting as a litigant-in-person and the Respondent being represented by a trade mark attorney.
The case is notable due to the AP’s observations on the parties’ use of AI. The AP noted that documents submitted by the Appellant contained quotes which were not found in the decisions cited, incorrect references and summaries which misrepresented cases. In the case of the Respondent, the AP noted that cases cited in the skeleton argument did exist but that their relevance was unclear and, on questioning during the hearing, the attorney was not able to provide a suitable explanation.
The AP refrained from issuing sanctions against either party, before setting out suggestions for the Registry’s practice, including that the IPO should consider providing a very clear warning setting out the risks of using AI for legal research and preparation of submissions and the potential consequences that may arise if a person puts fabricated citations before the registrar or AP.