Law and practice snippets: October 2025
An update on recent practice points by our Law and Practice Committee, including the UK IPO's Design Rights Consultation, scam emails and changes for Madrid system users.
News of note
UK IPO – Design Rights Consultation
The UK IPO has launched a comprehensive 12-week consultation seeking to modernise Britain's design protection system and strengthen the UK's position as a global design powerhouse. CITMA’s Designs Working Group are preparing a comprehensive response on behalf of members. However, individual responses are also encouraged. The consultation runs until 27th November 2025.
Further detail on the key areas being considered and how to participate can be found in the guidance provided by CITMA.
Brexit – Use of cloned trade marks in the UK
For cloned UK rights, use of the mark in the EU before 1st January 2021 counts as use of the comparable UK right. Rights holders should be aware that after 31st December 2025, relying on earlier use in the EU will no longer be sufficient to defend against non-use challenges of cloned UK rights. Use of the registered mark in the UK will be necessary to defend against non-use revocation.
For further guidance, please refer to the UK IPO guidance on comparable trade marks.
Cloned UK rights cover Gibraltar
The amended Gibraltar Trade Marks Act came into effect on the 1st January 2021, setting out provisions for ensuring the continued protection in Gibraltar of existing rights and privileges in respect of EU trade marks, and international trade marks with an EU designation. The amendments also included the implementation of the extension of the Madrid Protocol to Gibraltar in respect of designations of the UK in international applications made on or after the 1st January 2021.
The rights and privileges in respect of the following marks are therefore automatically extended to Gibraltar, as of the 1st January 2021, for so long as the registration of these marks in the UK remain in force:
- International trade marks registered under the Madrid Protocol and designating the UK as a result of an international application made on or after 1st January 2021;
- Comparable trade marks (EU), being those comparable trade mark rights automatically created in the UK on the 1st January 2021 in respect of those EU trade marks with an existing EU trade mark registration immediately before the 1st January 2021; and
- Comparable trade marks (UK), being those comparable trade mark rights automatically created in the UK on the 1st January 2021 in respect of international trade marks designating the EU which had protected status in the UK under the Madrid Protocol immediately before the 1st January 2021.
Full details are available from Companies House Gibraltar. See also Section 18 of the Trade Marks Act.
IPReg update on Regulation of Legal Services (Scotland) Act 2025
The Regulation of Legal Services (Scotland) Act 2025 came into effect in Scotland in June 2025 and introduced a new offence of taking or using the title "lawyer" when the person is not named on a register of regulated legal services providers established by one of the named regulators in Scotland.
A similar offence exists for firms. The Act names two regulators – The Law Society of Scotland and the Faculty of Advocates and Association of Construction Attorneys. IPReg issued an update to members on 20th October 2025 stating that “IPReg is not a named regulator in the RLSSA. It would therefore be a criminal offence for an IPReg-regulated attorney to refer to themselves as a "lawyer" in Scotland unless they are also regulated by one of the named Scottish regulators.”
IPReg have also confirmed that they are “unable to provide legal advice on the interpretation of the RLSSA and its implications for specific firms or scenarios, so if you have particular questions or concerns about the impact this new legislation may have on your practice, you should seek independent legal advice.”
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 – Scam emails and reporting of sharp practice
We continue to monitor fraudulent 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.
Contact details for reporting to Action Fraud and to the IPO can be found here.
International updates
China – Launch of new online trade mark application system
On 20th October 2025, the China National Intellectual Property Administration (“CNIPA”) launched a new online trade mark application system to improve quality and efficiency of trade mark examination. Further detail is available here.
China – Fast-track examination for Madrid international trade mark application
The CNIPA published guidance on 10th September 2025 on a new expedited process for examination of Madrid international trade mark applications submitted by domestic applicants. An applicant must meet relevant conditions, such as having urgent overseas trade mark registration or rights protection needs. For approved requests, examination of the application will be completed in 20 days. Further detail is available here.
WIPO – New email requirement for Madrid system users
From 1st November 2025, all international trade mark registration holders AND their representatives must have on record email addresses – for each asset they own or manage – to be able to request changes. The change is being implemented with a view to strengthening security measures, and users should note in most cases it takes up to 1 hour for email addresses to be fully recorded on the system (longer if other contact details are also changed).
More information is available here.
Cases of note
WISE Payments Ltd v With Wise Ltd & Ors [2025] EWHC 1722 (IPEC)
In a decision issued by the IPEC on 11th July 2025, the court applied the SkyKick judgement to narrow the specification of the Claimant’s trade mark rights in response to a bad faith challenge. In reaching its decision, the court found it “right to amend the specifications, to restrict them to a reasonable specification for the business including a penumbra of protection or range of goods/services into which the Claimant might, as at the date of application, reasonably have been expected to or intend to expand its business” (paragraph 50), resulting in the removal of broad terms ‘computer software; application software’ from the class 9 specification and limitation of the remaining terms to the specific areas of relevance to the Claimant.
The decision can be found here, with the discussion relating to the application of SkyKick at paragraphs 34 to 52.
Courtenay-Smith & Anor v The Notting Hill Shopping Bag Company Ltd & Ors [2025] EWHC 1793 (IPEC)
In its decision issued on 18th July 2025, the IPEC considered issues relating to trade mark infringement, passing off and copyright infringement, before dismissing all claims. The judgement provides interesting commentary on the restoration and vesting of assets following dissolution of a company, which affected the validity of the rights relied on by the First Claimant. Having voluntarily dissolved the company without first transferring the relevant trade mark rights or associated goodwill, the assets vested in the Crown as bona vacantia.
The First Claimant later restored the company and attempted to assign the trade mark to a newly incorporated entity (the Second Claimant), who applied to renew the trade mark before issuing proceedings.
The court found that the trade mark registration relied on by the Second Claimant was not properly renewed “because it was bona vacantia and, at all relevant times, property of the Crown such that it was not renewed by or with the authority of the Treasury Solicitor.” (paragraph 110), stating that the Second Claimant “is not the proprietor of the Renewed Trade Mark and never was the proprietor of the Trade Mark and cannot advance claims in its capacity as proprietor of it.” (paragraph 111).