Post-Brexit surge in demand for UK trade marks
There has been a large increase in demand for UK trade marks and registered designs since Brexit, the UK IPO confirmed at our Spring Conference.
Comparing January 2020 to 2021 UK trade mark applications were up by nearly 50% and the demand for UK registered designs was up by some 150%.
Natasha Chick, The UK IPO’s divisional director for tribunals, trade marks and designs shared her insight into how things were looking post-Brexit at the UK registry. She was joined on the panel by Kate O’Rourke and Catherine Wolfe – who were posing the questions.
Natasha revealed that there was a dip in demand for trade marks around the start of the Coronavirus pandemic in spring 2020. However, by the summer months demand was booming – likely caused by small businesses which started up during lockdown.
There was another increase in demand towards the end of 2020, with a large number of represented customers filing UK marks before the end of the Brexit transition period.
There was also a dip in demand for registered designs around the start of the pandemic, with this increasing steadily over the summer.
Natasha told the panel that this increased demand for filings had not yet translated into an increased demand for tribunal services, but it is something the UK IPO is monitoring.
Changes of address
There has been a 250% increase in demand for changes to the register – with large volumes of applications to change addresses on newly created comparable rights being made.
97% of those requests in January were handled within 10 working days. 10% of comparable marks were changed to a UK address in January.
These changes can be made in bulk. If there are 50 or more that need changing Natasha recommends using the dedicated bulk change of address service, which is now available until 30th September 2021.
The service has been popular, with 40,000 cases already changed using this bulk service.
Resourcing in UK IPO
Natasha admitted that there have been delays in issuing examination reports. This was first caused by the earlier than expected surge in demand during the pandemic.
Currently the UK IPO is working at 35-40 working days for trade marks and registered designs. This is longer than the usual 10 day target.
“We want to get back to our previous standard of issuing examination reports within ten days. We have recruited over 100 additional examiners in the last year, with the majority having been recruited since August,” Natasha reassured the panel.
The majority of the new examiners are for trade marks, but additional design examiners have been recruited too.
“Our aim is to get back to issuing examination reports within those 10 days within the next financial year. We have already put new case workers and hearing officers into our tribunal to deal with predicted increases in demand there,” Natasha added.
Search report letters
Kate asked Natasha to clarify the letters from examiners notifying holders of earlier rights.
Natasha responded: “For trade marks filed since 1st January, examiners are required to notify all earlier rights holders including those with comparable marks.
“For those filed before 31st December notifications were only required for holders of existing UK marks with the other marks being provided for the information of the customer applying for the trade mark.”
The advice is to speak to the examiner if you believe that this has not been done correctly.
There have been concerns raised regarding the filing date of UK applications based on an earlier EU application that was pending at 11pm 31st December.
Natasha said: “UK law is very clear on what the filing date is for a UK application and the process for applying for a UK right based on an earlier EU application doesn’t change that.
“The withdrawal agreement does refer to the application as having the same deemed filing date as the EU application.
“The trade marks will not have the dates on them changed so the filing date corresponds to the earlier EU mark. That’s important for us because there may be situations where customers may not have been entitled to some of the classification terms they have made applications for.
“The withdrawal agreement is very clear about the application that it needs to be for the same mark with either all or some of the classification terms that were applied for on the earlier EU right.”
When receiving applications, the UK IPO is storing the UK filing date as well as recording the earlier EU filing date as a priority date.
You can ensure this is recorded on the filing receipt and registration certificate when applying for a non-word mark by adding the earlier filing date in the mark text box. For word marks the examiner will add the information and it will appear on the registration certificate. The UK IPO can reissue the filing receipt if required. Click here for more information
Natasha confirmed that even if an application has been subsequently refused by the EUIPO this does not prevent it being filed in the UK as long as it was pending at 11pm on 31st December 2020. The UK IPO will make its own decision.
The UK IPO has not received as many applications for UK rights based on EU applications that were pending at the turn of the year as expected. Natasha encouraged delegates not to wait until the end of the available nine month window.
Certification and collective marks
There is no deadline for filing English translations of the regulations relating to an EU certification or collective trade mark registration, Natasha confirmed to the panel, and no requirement to do so.
Under the Withdrawal Agreement, the UK committed to not requiring any administrative process to gain a comparable right.
Any submission or translation of the regulations into English might not have met the conditions of the agreement. However if there is any dispute relating to the mark the UK IPO can require an English translation of those regulations to be filed for which the rights holder will receive notice.