Aug 13, 2024 (Newsletter Issue 7/24)Practice Update for Multi-item Design RegistrationsThe UKIPO updated its guidance on 1 August 2024 on what is acceptable for design registrations directed to products that include multiple, separable, elements. This differs from “complex products”, that involve many components that, typically, cannot be separated from the overall product without significant effort, to which the previous guidance still applies.
The UKIPO issued a Practice Notice (DPN) 01/24 updating the designs examination practice guide (specifically in paragraphs 2.14 to 2.16) to clarify how to approach these types of designs. The new guidance is consistent with the previous approach, but includes more detail along with examples of registrable and non-registrable designs.
In short, any multiple-component design that includes packaging, whether as functional as a cardboard box or as decorative as a wicker basket for a gift set, would probably not be allowable. Consumable or disposable elements are typically considered to make multiple-component designs non-registrable. This should not be seen as an absolute bar however, since a toiletry set with a consistent theme may well be considered allowable.
The UKIPO is open to multiple-component designs, but appears to view designs including elements not intended to be the main part of a product or contribute to an overall theme as likely to be non-registerable.
For more details click here.Source: www.gje.com May 05, 2024 (Newsletter Issue 3/24)UKIPO Launched Corporate StrategyThe UK IP Office has launched their refreshed Corporate Strategy.
This strategy sets out a clear mission for the next three years and explains how the Intellectual Property Office (IPO) will help grow the UK economy by providing an IP system that encourages investment in creativity and innovation.
For more details click here.
Source: www.gov.uk Mar 23, 2023 (Newsletter Issue 4/23)
UK's Ratification of Vienna Agreement Extended to Isle of Man
On 1 March 2023, WIPO notified the deposit by the Government of the United Kingdom of Great Britain and Northern Ireland of the following declaration:
The Government of the United Kingdom of Great Britain and Northern Ireland extends the application of United Kingdom's ratification of the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, done at Vienna on June 12, 1973, as amended on October 1, 1985 ("Vienna Agreement") to the territory of the Isle of Man, for whose international relations the United Kingdom of Great Britain and Northern Ireland is responsible.
The United Kingdom of Great Britain and Northern Ireland also extends to the territory of the Isle of Man its declaration made under the provisions of Article 4(5) of the Agreement that it does not undertake to include the numbers of all or some of the sections in official documents and publications relating to registrations and renewals of marks.
The said declaration entered into force, with respect to the territory of the Isle of Man, on 1 March 2023.
Source: www.wipo.int
Dec 15, 2022 (Newsletter Issue 18/22)Retained EU Law for Intellectual PropertyOn 15 November 2022, the UK Intellectual Property Office (UKIPO) informs about a list of retained EU law, as defined in section 6(7) of the European Union (Withdrawal) Act 2018. This law relates to intellectual property within the policy remit of the UKIPO.
This list represents the current understanding of the legislation that falls within the definition of the retained EU law (REUL). It may be subject to revision and additions on an ongoing basis as the UKIPO continues to consider legislation in this policy area.
The list excludes any business guidance and other forms of non-legislative instrument that may be affected by the Bill. Not all of this retained EU law is within scope of the sunset provision of the Bill as currently drafted.
For more information and to see the list of retained EU law, please click hereSource: www.gov.uk Sep 09, 2021 (Newsletter Issue 14/21)Digital IP Renewal Service Officially LaunchedOn July 14, 2021, the UK Intellectual Property Office (UKIPO) officially launched a new digital IP renewal service for its customers. Up to 1,500 patents, trademarks or registered designs can be renewed in a single digital transaction, including combinations of patents, trademarks and designs.
IPO requires an email address, the patent, trademark or registered design numbers and a debit or credit card, or UKIPO deposit account with sufficient funds to use the service.
The service is the first step towards the “One IPO' Service”, a five-year program to transform IP services and add value to UKIPO for the UK economy.
For more information, please check here. The new service can be accessed hereSource: www.gove.uk Sep 09, 2021 (Newsletter Issue 14/21)September 30, 2021: Important Deadline for Holders of International RegistrationsPlease be reminded, that September 30, 2021, is an important deadline for holders of international registrations: Holders of international registrations, which contain a designation of the European Union (EU) that were pending a decision by the EU IP Office on January 1, 2021, must apply for a national trademark registration with the United Kingdom Intellectual Property Office (UKIPO) on or before September 30, 2021, to preserve the date of the designation of the EU.
For more information, please check hereSource: www.wipo.int Mar 25, 2021 (Newsletter Issue 6/21)New Service to Update Representative AddressFollowing Brexit, owners of newly created comparable trademarks and re-registered designs will need to appoint a UK attorney to represent them before Intellectual Property Office (UKIPO).
The UKIPO has introduced a temporary service to deal with high volume requests to update the representative address. With this new service at least 50 cases can be updated when applying a single UK address for service for some, or all, of the comparable trademarks or re-registered designs that currently have another representative’s EEA address for service.
Furthermore, the temporary service has been extended until September 30, 2021.
For more information, please click here Source: www.gov.uk Jan 28, 2021 (Newsletter Issue 2/21)Extension of Several Treaties and Agreements to Guernsey and/or Isle of ManOn December 23, 2020, the United Kingdom of Great Britain (UK) and Northern Ireland deposited the following declarations with WIPO for the international relations of which the UK is responsible:
- in accordance with Article 62(3) of the Patent Cooperation Treaty (PCT), the United Kingdom's ratification of the PCT (see PCT Notification No. 13), shall be extended to Guernsey;
- the United Kingdom's ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act) (see Hague Notification No. 133), shall be extended to Guernsey;
- in accordance with Article 13 of the Locarno Agreement Establishing an International Classification for Industrial Designs (Locarno Agreement), the United Kingdom's accession to the Locarno Agreement (see Locarno Notification No. 55), shall be extended to the Isle of Man; and
- in accordance with Article 13 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement), that the United Kingdom's ratification of the Nice Agreement (see Nice Notification No. 45), shall be extended to Guernsey and the Isle of Man.
The said declarations shall enter into force, with respect to the territories as stipulated in the respective declarations, on March 23, 2021.
More information on the notice, please click hereSource: www.wipo.int Jan 14, 2021 (Newsletter Issue 1/21)Extension of UK International Registrations to Gibraltar and GuernseyOn October 1, 2020, the United Kingdom of Great Britain and Northern Ireland deposited a declaration with WIPO stating that the United Kingdom’s ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks shall be extended to the territories of Gibraltar and the Bailiwick of Guernsey, as from January 1, 2021.
Gibraltar
The Protocol will apply to Gibraltar in respect of designations of the United Kingdom in international registrations and in subsequent designations bearing a date of January 1, 2021, or later.
Guernsey
Applicants and holders may designate the Bailiwick of Guernsey in international applications and in subsequent designations bearing a date of January 1, 2021, or later. The IP Office of the Registrar in Guernsey will be the Office of the designated Contracting Party in respect of any designation of the Bailiwick of Guernsey recorded in the International Register. It will also be the Office of origin for international applications originating of Guernsey.
More information on the notice, please click hereSource: www.wipo.int Jan 14, 2021 (Newsletter Issue 1/21)Key IP Changes from 1 January 2021On January 1, 2021, the transition period has ended. European Union laws and regulations are no longer applicable in the UK. IP rights with unitary validity throughout all EU Member States are no longer effective.
The government of the United Kingdom provides key information how the IP system and Intellectual Property Office (IPO) will now operate. Key changes from January 1, 2021 are the following:
Legal representatives
UK attorneys will be unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO).
UK address for service
An address for service in the UK (includes the Isle of Man), Gibraltar or the Channel Islands is required for new applications and new requests to start contentious proceedings before the IPO. This applies to all registered IP rights (patents, trademarks, and designs).
Customs Enforcement
IP right holders are advised to check their existing Application for Action (AFA) to ensure that they are still valid.
From January 1, 2021, UK national and EU Customs AFAs granted by the Customs authorities in the UK continue to remain in place in relation to the UK only.
Any EU AFAs granted by the Customs authorities of another EU Member State no longer cover the UK. EU AFAs granted by the UK Customs authorities will no longer cover remaining member states of the EU after January 1, 2021.
Trademarks
From January 1, 2021, UK brand holders can still apply for and hold EU trademarks (EUTMs). However, EUTMs are valid in the 27 EU Member States only and no longer in the UK.
EU Trademarks (EUTM)
From January 1, 2021, the IPO will create a comparable UK trademark for every registered EU trademark (EUTM).
No certificate of registration is issued but owners of this new right are able to access the information online or obtain a certified copy of the registration. The comparable UK trademark is a fully independent UK trademark which can be challenged, assigned, licensed or renewed separately from the corresponding EUTM.
Holders of applications for EUTMs which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection.
International Registrations designating the EU
From January 1, 2021, the IPO will create a comparable UK trademark for every International Trademark Registration designating the European Union. Each new comparable trademark (IR) is treated as if applied for and registered under UK law. As such, it may be challenged, assigned, licensed or renewed separately from the original international registration.
Holders of International Registration designating the EU which are pending on 1 January 2021, will be able to apply to register a UK trademark in the nine months after 1 January 2021 and retain the filing date of the pending EU designation.
More detailed information can be seen on IPO's Website hereSource: www.gov.uk; www.dyoung.com Jan 14, 2021 (Newsletter Issue 1/21)Customs Enforcement Post-BrexitOn December 3, 2020, the HM Revenue and Customs (HMRC) provides detailed information on the UK customs enforcement reminding to apply for protection against infringements of intellectual property rights on imports into and exports out of the UK from 1 January 2021.
From January 1, 2021, UK rights holder will need to file a new UK Customs Application for Action (AFA) via the HMRC portal using the online form here. The form can only be accessed using a Government Gateway ID and password.
If a rights holder has filed an EU-wide Application for Action through HMRC, the AFA will remain valid and enforceable in the UK. However, it will cease to have effect outside the UK after 31 December 2020. Rights holders will need to file a separate EU-wide AFA through an EU27 Customs Authority via the European Website here.
If a rights holder has already filed an EU-wide AFA via one of the EU27 Customs Authorities before 31 December 2020, the AFA will remain valid in the remaining 27 EU Member States. However, it will no longer have effect within the UK. A separate application will need to be filed through the HMRC portal.
More information can be accessed here and hereSource: www.gov.uk; www.twobirds.com Dec 03, 2020 (Newsletter Issue 20/20)
UK Address for Service after Brexit Required
From January 1, 2021, a UK address (or Channel Island address) for service is required for new trademark, design and patent applications, new oppositions, and other proceedings the Government confirmed. Currently, a correspondence address within the other 30 countries of the European Economic Area (EEA) could be used in proceedings.
A UK address for service will not be required for the renewal of existing registered or granted rights. The rules will include transitional provisions for ongoing cases. The EU Trade Mark and Registered Community Design rights that will be re-created on the UK register will not need a UK address for service in the three years following the end of the transition period, as per the terms of the UK’s withdrawal agreement with the EU (Article 55(2)).
The changes will come into force from January 1, 2021 as long as parliamentary time allows them to be tabled before end of the year.
Source: www.gov.uk
Oct 22, 2020 (Newsletter Issue 17/20)Declarations by UK and Northern Ireland on Several TreatiesOn October 1, 2020, WIPO notifies the deposit by the Government of the United Kingdom of Great Britain and Northern Ireland of the following declarations:
- in accordance with Article 24(1) of the Paris Convention for the Protection of Industrial Property (Paris Convention), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Paris Convention (see Paris Notification No. 7), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible;
- in accordance with Article 31(1) of the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Berne Convention (see Berne Notification No. 125), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible;
- the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) (see Madrid (Marks) Notification No. 66), shall be extended to the territories of Gibraltar and the Bailiwick of Guernsey, for the international relations of which the United Kingdom of is responsible;
- in accordance with Article 13 of the Nice Agreement Concerning the Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Nice Agreement (see Nice Notification No. 45), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible; and
- in accordance with Article 62(3) of the Patent Cooperation Treaty (PCT), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Treaty (see PCT Notification No. 13), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible.
The respective declarations as stipulated above shall enter into force, with respect to the territories on January 1, 2021.
For more information, please click hereSource: www.wipo.int Sep 10, 2020 (Newsletter Issue 14/20)Update on Comparable UK Trademarks The UK Intellectual Property Office (IPO) has informed the Anti-Counterfeiting Group of some practical steps on administration of trademarks and designs during and post BREXIT. IPO will issue a comparable UK registered trademark for each current EU registered trademark after IP Completion Day on December 31, 2020. Over two million new UK trademarks and designs will be created by this.
The following guidance has been outlined:
- IPO will publish a general website notice at the end of the transition period, in all EU languages, informing rights holders that they now own a UK right trademark.
- IPO does not plan to send rights holders individual lists of the new UK trademarks that they will own.
- Each new UK trademark will be numbered with an identical registration number as the related EU trademark it is granted from, but it shall be prefixed with “009”.
- IPO will not send certificates to rights owners of new rights. Rights holders can print out details of trademarks from the IPO searchable database if they need a record of their new rights.
The full Anti-Counterfeiting Group update can be seen hereSource: www.hoganlovells.com; www.a-cg.org Sep 10, 2020 (Newsletter Issue 14/20)Guidance on International Registrations Designating EUThe UK Intellectual Property Office (IPO) provides guidance on how international registrations designating the European Union will be protected in the United Kingdom after the end of the transition period.
- Comparable trademarks (IR)
IPO informs that on January 1, 2021, protected international registrations designating the EU will no longer be valid in the UK. On this day, these rights will be immediately and automatically replaced by UK rights at no costs. IPO will create comparable trademarks (IR), which will be recorded on the UK register.
Each new UK right will be treated as if applied for and registered under UK law, and may be challenged, assigned, licensed or renewed separately from the original international registration.
The filing and registration date the comparable trademark (IR) will correspond to the date of the international registration. This date will also apply for the purposes of future UK renewal.
- Effect of international (EU) subsequent designations
Holders who have designated the EU more than once in their international registration (IR) will receive comparable trademarks (IR) for each designation that has been protected in the EU. Where multiple comparable trademarks are created from a single international registration, each right will be independent.
In all cases, the filing and registration date accorded to the comparable trademark (IR) will correspond to the date on which protection in the EU was conferred.
Where an EU designation was obtained as part of an application for an international registration, the filing and registration date of the resulting comparable trademark (IR) will correspond to the date of the international registration.
However, where EU protection was obtained as a result of a subsequent designation, the relevant date of the resulting comparable trademark (IR) will be the date on which your request for subsequent designation was recorded in the international register.
In all cases, the date of completion of the registration procedure recorded against your comparable trademark (IR) will be the publication date of the EUIPO bulletin confirming that EU protection was not refused.
- Renewals and restoration
For future renewals, comparable trademarks (IR) that have been created from a protected EU designation filed as part of an international application will inherit the existing renewal date of the corresponding international registration.
Where created from an EU subsequent designation, the comparable mark will adopt the date of that subsequent designation for the purpose of future renewal.
The UK renewal date for comparable trademarks (IR) that correspond to an EU subsequent designation will be different from that recorded against the corresponding international registration.
IPO provides further information on numbering of comparable trade mark, pending applications and much more hereSource: www.gov.uk Feb 06, 2020 (Newsletter Issue 1/20)Withdrawal from EU and Transition PeriodThe United Kingdom (UK) and European Union (EU) have ratified the Withdrawal Agreement and UK departed from the EU on January 31, 2020.
A transition period has been set up from February 1, 2020 to December 31, 2020.
During this period, EU law will continue to operate as it does now in the UK. The Intellectual Property (IP) system will continue as it is until December 31, 2020.
The Withdrawal Agreement ensures continued protection of existing EU-level IP rights in the UK after the end of the transition period. IPO will convert almost 1,4 million EU trademarks and 700,000 EU designs to comparable UK rights at the end of the transition period. These will come into effect on January 1, 2021.
EU trade marks
Throughout the transition period the UK will remain part of the EU trademark System. EU Trade Marks (EUTM) will continue to extend to the UK during this time.
Businesses, organisations or individuals that have applications for an EUTM which are ongoing at the end of the transition period will have a period of nine months from the end of the transition period to apply in the UK for the same protections.
International registrations designating the European Union
During the transition period, international registrations for trademarks and designs protected via the Madrid and Hague systems which designate the European Union will continue to extend to the UK.
In accordance with the terms of the Withdrawal Agreement, international registrations for trademarks and designs that have been protected before the end of the transition period will continue to be protected in the UK after December 31, 2020. IPO is continuing to work with the World Intellectual Property Organization (WIPO) on the mechanism to ensure continued protection.
For further information, please check hereSource: www.gov.uk Dec 05, 2019 (Newsletter Issue 17/19)IP Enterprise Courts Outside LondonThe expansion of the UK Intellectual Property Enterprise Court (IPEC) has continued with claims now able to be issued in seven new locations outside of London.
The IPEC is a specialist court for intellectual property disputes. It is a division of the High Court and deals with less complex and lower value claims (less than £500,000 in damages sought) and is designed to provide access to justice for small and medium sized enterprises or individuals. The IPEC also has a small claims track which hears the most straightforward intellectual property cases, where less than £10,000 is claimed.
For further information, please check hereSource: K&L Gates Apr 04, 2019 (Newsletter Issue 5/19)New Design Rights Bill for Cayman IslandsOn February 19, 2019, a new Design Rights Bill 2019 was published in the Cayman Islands, which will replace the current Design Rights Registration Law 2016 once it comes into force. It is not yet known when this will occur.
The existing legislation gives owners of original UK registered designs and registered European designs the opportunity to extend their rights to the Cayman Islands. When the Bill comes into force it will no longer be necessary to first register the design right in the United Kingdom.
In order to qualify for registrability under the terms of the new law, the design will need to be “original”. A design will be not deemed original if it is commonplace in the design field in question at the time of its creation. Examination will be limited to formalities.
For more information, please click hereSource: www.lysaght.co.uk Apr 04, 2019 (Newsletter Issue 5/19)Latest Edition of Trade Mark GuideThe UK Intellectual Property Office (IPO) informs about the latest edition of Trade Mark Guide.
IPO has produced a new Trade Mark Guide to improve shared understanding between trade mark experts and those undertaking or using trade mark research. Topics include:
- What is a trade mark?
- Trade mark data
- Nationality
- Trade mark classification
- Trade mark quality
- The value of a trade mark
For more information, please click hereSource: www.gov.uk Feb 28, 2019 (Newsletter Issue 3/19)Designs Examination Practice Guide UpdatedThe UK Intellectual Property Office (IPO) informs that the Registered Designs Examination Practice guide has been updated with regard to Part F: Locarno classification (Paragraph 15.05).
This guide provides information on how design applications are examined in respect of national applications filed at the UK Intellectual Property Office.
For further information, please click hereSource: www.gov.uk Feb 28, 2019 (Newsletter Issue 3/19)Equivalent UK Marks after BrexitThe UK Intellectual Property Office (IPO) informs that the Office will create equivalent UK trademarks for all registered European Union Trade Marks (EUTMs) after Brexit.
These equivalent UK rights will be recorded on the UK register and retain the filing dates recorded against the corresponding EUTM. They will also inherit any priority and/or seniority dates. The Office informs that these trademarks will be fully independent UK trademarks which can be challenged, assigned, licensed or renewed, separately from the original EUTM.
The number allocated to the comparable mark will be the last 8 digits of the EUTM prefixed with UK009 in order to identify comparable UK rights and distinguish them from existing UK trademarks.
The following examples show how comparable UK trademarks will be numbered:
000000977 (existing EUTMs) will be UK00900000977 (comparable UK trademark)
For further information, please check here
Also, check our earlier update on 'Protection of EU Trademarks and Designs when No Brexit Deal'.Source: www.gov.uk Jan 31, 2019 (Newsletter Issue 1/19)Protection of EU Trademarks and Designs when No Brexit DealThe UK government informs on the different eventuality, including a no deal scenario:
Existing registered EU trademarks and registered Community designs
- Will continue to be valid in the remaining EU member states
- Protection in the UK will be through a new, equivalent UK right granted with minimal administrative burden
- The Office will notify rights holders by publishing a notification and guidance on its website
- Rights holders will be able to opt out if they do not want to receive an equivalent UK trademark or design
- Provision will be made and information provided regarding the status of ongoing legal disputes involving EU trademarks or registered Community designs before the UK courts
Pending applications for an EU trademark or a registered Community design
- Applicants will not be notified
- After exit they will need to consider whether they refile with the Intellectual Property Office (UKIPO) to obtain protection in the UK
- Refiling will take place at the UKIPO under the same terms for a UK equivalent right, using the normal application process in the UK.
- Rights holders taking this step will meet the cost of refiling the application in accordance with the UK application fee structure.
- For a period of 9 months from exit, the filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application will be recognised.
New applications
- Will be eligible to be filed in the UK for UK trademarks and designs as they are now, and at the cost specified in the UK fee structure.
- UK applicants, like EU and third country applicants, will be able to apply for protection in the EU through an EU trademark or registered Community design as they do currently
- Applying for trademark or design protection in the UK can be done via post or online.
Unregistered Community designs
- The unregistered Community design provides a 3 year protection from the date the design is first disclosed within the EU. Unregistered Community designs existing at the Brexit point will continue to be protected and enforceable in the UK for the remaining period of protection of the right.
- The UK will create a new unregistered design right in UK law which mirrors the characteristics of the unregistered Community design ('Supplementary Unregistered Design Right'). Designs disclosed after Brexit will also be protected in the UK under the current terms of the unregistered Community design.
The same provisions will apply to international registrations designating the EU filed with the World Intellectual Property Organisation. Hence there is continued protection in the UK from March 2019 onwards for trademarks and registered designs (filed through the Madrid and Hague Systems, and designating the EU as the area where they apply).
For further information, please check hereSource: www.gov.uk Nov 30, 2018 (Newsletter Issue 20/18)Brexit Withdrawal Agreement FinalisedThe official draft Agreement on the withdrawal of the UK from the EU was released.
Regarding intellectual property, as already foreseen in the no-deal scenario, EU IP rights will continue to be protected in the UK after Brexit.
Therefore, holders of IP rights which have been registered or granted before the end of the transition period will become the holder of a comparable UK right.
The provisions regarding IP rights are covered under Title IV (Articles 54 to 61) in the Withdrawal Agreement. To access the Agreement, please click hereSource: www.euipo.europa.eu Oct 11, 2018 (Newsletter Issue 17/18)Government’s Notices on 'No Deal' BrexitOn September 24, 2018, the UK government has published a series of technical notices in the event in which the UK leaves the EU without an agreement (a 'no deal' scenario).
The government announces that they will work to provide continued protection in the UK after March 2019 of trademarks and designs.
Registered EU trademarks and registered Community designs:
Protection will be through a new, equivalent UK right which will come into force once UK will exit the EU. The new UK right will be provided with minimal administrative burden. The trademark or design will then be treated as if it had been applied for and registered under UK law. This means that these trademarks and designs:
- will be subject to renewal in the UK
- can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal
- can be assigned and licensed independently from the EU right
Applications for EU trademarks and Community design:
Ongoing applications at the date of exit can be refiled with the Intellectual Property Office under the same terms for a UK equivalent right, using the normal application process for registered trademarks and registered designs in the UK. This can be done via post or online. Forms and instructions can be found here for trademarks and here for registered designs.
Filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application will be recognised by the UK government for a period of nine months from the exit. The UK application fee structure will apply.
International Registrations for trademarks and designs designating the EU:
The UK is working to provide continued protection in the UK from March 2019 onwards for trademarks and registered designs. This also includes practical solutions for pending applications.
For further information, please click here
Check the notices on patents, copyrights and information on the exhaustion of intellectual property rights if there’s no Brexit deal hereSource: www.gov.uk Sep 20, 2018 (Newsletter Issue 16/18)White Paper on EU IP Rights after BrexitThe UK government has given further reassurances to business that EU intellectual property rights will continue to be protected in the UK after Brexit.
On July 12, 2018, the UK government published a White Paper on the future relationship between the United Kingdom and the European Union, setting out an important vision for elements of the future relationship between the UK and EU on IP.
For more information on updates, please also click hereSource: www.iprhelpdesk.eu; www.gov.uk Jul 24, 2018 (Newsletter Issue 13/18)Trade Secrets Regulations Came into ForceOn June 9, 2018, the UK’s Trade Secrets Regulations 2018 (SI 2018 No. 597) came into force. The Trade Secret Regulations implement into UK law the EU Directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure ((EU) 2016/943) (“the EU Directive”). Subject to any change of policy by the Government, the Regulations will remain in force in the UK after Brexit.
For more information, please click hereSource: www.limegreenipnews.com Jul 24, 2018 (Newsletter Issue 13/18)
Hague Agreement for Industrial Designs in Force
As of June 13, 2018, Hague System users can now designate the United Kingdom in an international design application.
Source: www.wipo.int
Apr 26, 2018 (Newsletter Issue 8/18)UK Residents and Entities no Longer Eligible to Register .eu Domains post-BrexitOn March 28 2018, the Directorate-General for Communications Networks, Content and Technology, issued the following Notice to Stakeholders:
As of the withdrawal date, undertakings and organisations that are established in the United Kingdom but not in the EU and natural persons who reside in the United Kingdom will no longer be eligible to register .eu domain names or, if they are .eu registrants, to renew .eu domain names registered before the withdrawal date.
For further information, please see the Notice hereSource: www.ec.europa.eu Mar 29, 2018 (Newsletter Issue 6/18)
Hague Agreement for Industrial Designs Ratified
The United Kingdom has deposited the instrument of ratification needed to join the Hague System for the international registration of industrial designs.
The Agreement will come into effect on June 13, 2018.
Source: www.gov.uk
Feb 28, 2018 (Newsletter Issue 4/18)Consultation on Changes to UK Trademark LawThe UK Intellectual Property Office (IPO) has launched a consultation on changes to UK Trade Mark law. These changes result from the Trade Mark Directive 2015 which helps to minimise the differences between national and EU trademark systems.
It includes a draft statutory instrument, and discussion of some issues of particular interest. These include removal of the requirement to graphically represent trademarks, restriction of the ‘own name defence’ to individuals, and removing expired marks from the ‘list’ of earlier rights notified to applicants.
The IPO is seeking views on the proposed legislative changes until April 16, 2018. The following email address TMDirective@ipo.gov.uk may be used.
For further information, please see hereSource: www.gov.uk Nov 22, 2017 (Newsletter Issue 20/17)Trademark Search Tool ChangedThe UK Intellectual Property Office (IPO) announces that they have improved their online search services to streamline the usability of their trademark search tool.
These improvements were added to reduce the number of steps required when using their online search function.
Further changes have been implemented. For more information, please click here
Source: www.gov.uk Sep 20, 2017 (Newsletter Issue 16/17)Transitional Provisions Regulations in Cayman Islands IssuedThe Cabinet of the Cayman Islands issued the Trade Marks (Transitional Provisions) Regulations, 2017 (the “Transitional Provisions”) on July 28, 2017. The Trade Marks Law, 2016 was passed in November of last year and went into effect on August 1, 2017.
The Registrar must automatically transfer marks currently registered under the 2011 Law to the Register established by the 2016 Law. These marks will continue as registered until their renewal dates as established under the 2011 Law (i.e., the renewal dates of the UK registration, EUTM, or International Registration used as their basis). Disclaimers, conditions, and restrictions remain with the transferred marks. Pending applications for registration made before August 1, 2017 will be treated as a registration under the 2011 Law. Such marks will then automatically become a part of the new Register as described above.
For further information, please read the article of our Partner Caribbean IP here
Source: Caribbean IP, USA Jul 25, 2017 (Newsletter Issue 14/17)Business Guidance for IP (Unjustified Threats) Act Now PublishedThe UK Intellectual Property Office (IPO) informs that the Intellectual Property (Unjustified Threats) Act received Royal Assent on April 27, 2017. A Commencement Order is required for the Act’s measures to be brought into force which is expected to take place on October 1, 2017.
The Act will make the law of unjustified threats more easily navigable for rights holders, professional advisers and third parties alike.
IPO has now published a business guidance on the Intellectual Property (Unjustified Threats) Act 2017. The guidance sets out the changes that have been made to the legal framework, and the expected impacts on IP rights holders, and third parties, as well as businesses, including legal services.
The business guidance can be accessed here
Source: www.gov.uk Jun 14, 2017 (Newsletter Issue 11/17)New Trademark Laws in the Cayman Islands Effective on August 1,2017The new Trade Marks Law 2016 will be implemented in the Cayman Islands on August 1, 2017.
The current law provided only for the registration of trademarks previously registered in the UK, or as a European Union Trademark, or as an International Registration designating UK, which results in extension of identical rights in Cayman with no provision for opposition.
The new Law will make it possible for trademark proprietors to file for trademark protection without the need to re-register a UK or EUTM registration in the Cayman Islands.
Cayman trademark registrations based on UK/EU trademark registrations will continue to have effect until the next renewal/expiry date and will fall due for renewal on the same date as the underlying UK/EU trademark.
Future trademark renewals can be made independently. The renewal period of marks filed under the new law will be 10 years from the date of filing.
For further information, please check the article from Ms Sophie Davies from HSM IP, Cayman Island, which can be accessed here
Also detailed and updated information on the Cayman Islands can be seen in our guide on Dependent Territories here
Source: HSM IP, Cayman Islands and Caribbean IP, USA May 26, 2017 (Newsletter Issue 10/17)Accession to Hague Agreement ExpectedThe United Kingdom Minister for Intellectual Property has recently stated that the UK will ratify and join the Hague Agreement for International Design registrations by March 31, 2018. The service is due to come into operation on April 6, 2018. Currently, UK-based applicants are able to apply for an International Design by virtue of the UK being part of the EU. This separate ratification by the UK will ensure that UK-based applicants will continue to be able to file International Design registrations after the UK leaves the EU.
Under the Hague Agreement it is possible to submit a single ‘International’ design application which covers selected states that are members of the Hague Agreement. By virtue of the UK joining the Hague Agreement, the UK will also be individually selectable from April 2018 as a designated state rather than only via an EU designation.
Source: Boult Wade Tennant, United Kingdom
Apr 12, 2017 (Newsletter Issue 7/17)White Paper on Great Repeal Bill PublishedIn March 2017 the Prime Minister formally started the process of the United Kingdoms’ withdrawal from the European Union (EU). The government has published a White Paper on the Great Repeal Bill. This will provide legal certainty by converting the body of existing EU law into United Kingdom (UK) law.
EU Trademarks (EUTM) continue to be valid in the UK while the country remains a full member of the EU. When the UK leaves the EU, a EUTM will continue to be valid in the remaining EU member states.
When the UK has left the EU, UK businesses will still be able to register an EU trade mark, which will cover all remaining EU Member States.
With regard to International Registrations UK businesses will continue to have access to the Madrid System when looking to protect their trademarks.
IPO informs that inquiries can be sent EUenquiries@ipo.gov.uk.
Source: www.gov.uk Mar 29, 2017 (Newsletter Issue 6/17)Guide on Registered Designs Examination Practice IntroducedThe UK Intellectual Property Office (IPO) introduced on its website the guide on registered designs application and examination practice.
The guide explains the Intellectual Property practice under the Registered Designs Act 1949 and the Registered Design Rules 2006. It provides guidance on how design applications are examined in respect of national applications filed at IPO. Its aim is to ensure consistency of approach in respect of decisions made by the Registrar of Designs, and to provide guidance on examination practice and procedures for those seeking to register their designs.
For more information, please click here
Source: www.gov.uk Jan 11, 2017 (Newsletter Issue 1/17)IP Laws Passed in Cayman IslandsOn November 16, 2016, the Cayman Islands Government passed two IP laws: The Design Rights Registration Law, 2016 and The Patents and Trade Marks (Amendment) Law, 2016. Copies of the laws were published with Gazette No. 25 dated December 5, 2016.
The new Trade Marks Law has also been approved by Government and is expected to be published shortly on or before April 1, 2017.
The impact of The Design Rights is that the new law provides owners of original UK registered designs (UKRD) and registered Community designs (RCDs) with the opportunity to extend their rights to the Cayman Islands. The extension / re-registration process affords the owner with all the equivalent rights and remedies available to them in respect of that design right in the UK. The Cayman Islands does not have its own unregistered design right regime, so protection should be sought through the registration process.
The primary purpose of The Patents and Trade Marks (Amendment) Law is to essentially strip out all references to “trademarks” in the existing Patents and Trade Marks Law in order to make way for the new Trade Marks Law expected to come into force in 2017. Whilst under the new Trade Marks Law only national trade mark applications will be accepted in the Cayman Islands, the Patents law will continue only to provide for the re-registration/extension of UK Registered Patents to Cayman; there is no national registration route.
For more information, please see the article of the law firm HSM IP Ltd here
Source: HSM IP, Cayman Islands Nov 22, 2016 (Newsletter Issue 21/16)
Appearance of UKIPO Digital Services Changed
The UK Intellectual Property Office (UKIPO) informed that two trademark services have been changed as of a consequence of the ongoing work of the digital services.
The changes are to improve the appearance of these services which include the
- response to trademark examination letter
- response to Right Start trademark examination letter
The changes have taken place on November 3, 2016.
Source: www.gov.uk
Oct 12, 2016 (Newsletter Issue 18/16)Major Changes to IP Laws in Cayman Islands SoonThree new intellectual property (IP) laws concerning trademarks, patents and designs were published in the Cayman Islands on August 31, 2016. These laws will come into force on a date to be announced. They will have a significant impact, especially on trademark and design protection. The laws are:
- The Trade Marks Bill 2016
- The Design Rights Registration Law 2016
- The Patents and Trade Marks (Amendment) Bill 2016
Presently, the only way of getting IP protection in the Cayman Islands is through the extension of UK registrations, and there is only provision for patent and trademark rights. The new laws will:
- Create a system of direct trademark registration in the Cayman Islands
- Create a system for the extension of UK design registrations
- Bring about some minor amendments to the existing system of extending UK patents
The bill on trademarks creates an independent trade mark registration system. Other interesting features of the bill are:
- There is a requirement that a proprietor must appoint an agent;
- The term ‘trade mark’ is defined in fairly broad terms to include words, designs, numerals, letters and shapes of goods or their packaging;
- There is provision for the registration of ordinary trademarks, as well as certification marks and collective marks;
- There are absolute and relative grounds of refusal;
- The registration and renewal terms are 10 years;
- An annual maintenance fee is payable;
- There are various offences relating to trademark infringement, and these carry hefty fines and prison terms;
- There are specific provisions regarding counterfeiting - for example, the registered proprietor can give notice to the Collector of Customs of suspected infringing goods that are expected to arrive in the Cayman Islands and, provided that the proprietor furnishes the necessary fees and security, the officials will impound the goods and the goods will be forfeited;
- Regulations can be passed and these can relate to the continued application of the Patents and Trade Marks Law of 2011 - presumably the Regulations will explain how existing registrations (UK extensions) will be treated.
For more information, please click here
Source: Spoor & Fisher, South Africa/Channel Islands
Sep 28, 2016 (Newsletter Issue 17/16)Filing of International Trademark Applications by EmailThe UK Intellectual Property Office (UKIPO) announced that it is now possible to file international trademark applications electronically as from September 26, 2016, by using the following email address Internationaltrademarks@ipo.gov.uk
The Office encourages applicants to use the UKIPO version of the MM2. The MM17/MM18 will be accepted if filed with the MM2. No other forms or correspondence should be emailed to the above mentioned address.
An updated version of the UKIPO’s form MM2 'Application to register an International trade mark' is available here
Source: www.gov.uk Sep 28, 2016 (Newsletter Issue 17/16)Fees for Designs Reduced SoonThe UK Intellectual Property Office (UKIPO) has changed fees for UK registered design protection. The new fees will come into force on October 1, 2016.
The fee reductions will be substantial. Filing fees will be based on the number of applications filed; the more applications, the greater the saving. For example, the fee for filing one design application will be reduced from £60 to £50 when filed electronically which is not a great saving. However, applicants can now for the first time file up to ten designs for a single fee of £70 (currently £420) and up to 20 designs for a single fee of £90 (currently £820).
Renewal fees will increase every five years of the term of protection but, overall, will also be reduced, with the biggest savings made in the third and final renewal periods. For example, the renewal fee payable at the end of year 15 will be £110 compared with the current £310 (a 64% reduction). At year 20, the fee will be £140 instead of the current £450 (a 69% saving). Overall, the total renewal fees for a full 25 year term will be reduced by 63% from £1,100 to £410.
For further information, please check here
Source: www.gov.uk and Squire Patton Boggs (UK) LLP, UK Jul 12, 2016 (Newsletter Issue 13/16)All EU Laws Fully in ForceEUIPO informs that the United Kingdom remains a member of the European Union, with all the rights and obligations that derive from this. According to the Treaties which the United Kingdom has ratified, EU law continues to apply to the full to and in the United Kingdom until it is no longer a member.
Unless and until the process in article 50 of the Lisbon Treaty is triggered by the United Kingdom, the formal process for the United Kingdom to exit the EU will not commence. The negotiations once article 50 has been triggered will last up to two years, longer if agreed by the consent of all member states.
To access the statement, please click here
Source: www.euipo.europa.eu Jun 14, 2016 (Newsletter Issue 11/16)Changes to Annual Fee Payment in Cayman IslandsThe General Registry of the Cayman Islands recently announced that it will prohibit advance payment of annual fees. Practice Note No. 01/2016, which goes into effect on August 1, 2016, requires all trademark and patent annual fee payments to be made on or after January 1 of the year in which they are due. A penalty has applied and will continue to apply for fees paid after 31 March.
In the past, it has been commonplace to pay annuities well ahead of time, including for years in advance or up to the next renewal date. Mark holders will lose that option when the Practice Note goes into effect. Clients wishing to take advantage of prepayment of annuities must act to do so before the end of July 2016.
Source: Caribbean IP, USA Sep 02, 2015 (Newsletter Issue 13/15)
New Trade Marks Act Now Effective in British Virgin Islands
The Trade Marks Act, 2013 came into force in the British Virgin Islands on September 1, 2015. The new Act replaces the Trade Marks Act (Cap.158) of 1887 and the United Kingdom Trade Marks Act (Cap.157) of 1946.
There are several additional features of the new law. Most significantly, it will abolish the dual filing system. It will no longer be possible to register marks in the British Virgin Islands on the basis of an existing United Kingdom registration.
The main features of the new law include:
- Provision for service marks
- Provision for defensive marks, series marks, certification and collective marks
- Adoption of the 10th Edition of the Nice classification
- Provision for multi-class registration
- Protection for well-known marks
- Definition of a registrable trade mark broadened to include any sign that is capable of being registered graphically (including brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, ticket or word and numeral, as well as “non-traditional” sound, taste and scent marks)
- Priority may be claimed under the provisions of the Paris Convention
- Renewal period revised from 14 to10 years
- Provision for removal after three years’ non-use
- Provision for recordal of licences
- Provision for recordal of assignments without goodwill
- Compulsory preliminary searches (under review)
Transitional provisions:
- Independent and UK-based registrations filed before September 1, 2015, will remain valid under the new law
- Independent and UK-based applications which were pending at the time of the implementation of the new law will be finalised under the provisions of the repealed law
- The 14-year renewal term will continue to apply to independent registrations filed under the repealed law (the 10-year term already applies to UK-based registrations)
- Existing independent registrations will need to be re-classified from the old British to the Nice classification (procedure to be confirmed)
Further, a new scale of official fees has been introduced.
Source: Spoor & Fisher, South Africa/Channel Islands
Jul 28, 2015 (Newsletter Issue 12/15)New Trade Marks Act in Cayman Islands SoonA new Trade Marks Act is in the process of being finalized in the Cayman Islands. It is anticipated that the new law will be passed and implemented by September 2015.
The new law will make it possible for trade mark proprietors to file for trade mark protection in the Cayman Islands directly. Currently, it is only possible for proprietors to gain trade mark protection in the Cayman Islands by way of an application to extend an existing UK or Community trade mark registration. This can be a costly and time consuming process, particularly for proprietors who have no desire or need to maintain trade marks in the UK and/or EU.
The new law provides for a full examination and opposition process, as well as modern trade mark infringement provisions and effective remedies.
Source: HSM IP, Cayman Islands Jul 14, 2015 (Newsletter Issue 11/15)
Amendments of the New Trade Mark Act in British Virgin Islands
Major changes are about to take place in the IP regime of the British Virgin Islands, when the Trade Marks Act, 2013 (passed by the House of Assembly on April 30, 2013) comes into force on September 1, 2015.
The new Act will replace the Trade Marks Act (Cap.158) of 1887 and the United Kingdom Trade Marks Act (Cap.157) of 1946, ending the dual filing system currently in place for trademarks. Once the new laws go into effect, it will no longer be possible to register marks in British Virgin Islands on the basis of an existing United Kingdom registration.
For trade mark owners to benefit from the existing provision that permits the “fast-track” extension of a United Kingdom national right to the British Virgin Islands , a UK-based application should be filed in good time before the present legislation is repealed and that option ceases to exist.
The main features of the new law include:
- Provision for service marks
- Provision for defensive marks, series marks, certification and collective marks
- Adoption of the 10th Edition of the Nice classification
- Provision for multi-class registration
- Protection for well-known marks
- Definition of a registrable trade mark broadened to include any sign that is capable of being registered graphically (including brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, ticket or word and numeral, as well as “non-traditional” sound, taste and scent marks)
- Priority may be claimed under the provisions of the Paris Convention
- Renewal period revised from 14 to 10 years
- Provision for removal after three years’ non-use
- Provision for recordal of licences
- Provision for recordal of assignments without goodwill
- Compulsory preliminary searches (under review)
Transitional provisions:
- Existing independent and UK-based registrations will remain valid under the new law
- Existing independent and UK-based applications which are still pending at the time of the implementation of the new law will be finalised under the provisions of the repealed law
- The 14-year renewal term will continue to apply to independent registrations filed under the repealed law (the 10-year term already applies to UK-based registrations)
- Existing independent registrations will need to be re-classified from the old British to the Nice classification (procedure to be confirmed)
A new scale of official fees is being introduced. This is currently under review, and should be in place by the time the new law takes effect.
Source: Spoor & Fisher, South Africa/Channel Islands
Jun 16, 2015 (Newsletter Issue 9/15)New Trade Mark Act in British Virgin IslandsOn September 1, 2015, the British Virgin Islands’ new Trade Marks Act, 2013 and Trade Marks Rules, 2015 will go into effect, ending the dual filing system currently in place for trademarks. Once the new laws go into effect, it will no longer be possible to register marks in British Virgin Islands on the basis of an existing United Kingdom registration.
For many years, this has been a relatively fast track to registration for UK mark owners. For trademark owners without an existing UK registration, the current regime requires application within the local system. At present, the local system allows new filings for goods only, and all goods must be classified according to the British classification system.
Long outdated, this classification system does not afford adequate protection for many mark owners. Under the new regime, all applications will be made within the local filing system, and finally it will be possible to register both goods and services according the International Classification system. New fees have not yet been set but should be determined before the implementation of the new trademark laws.
Source: Caribbean IP, USA posted on www.iptango.blogspot.de Sep 02, 2014 (Newsletter Issue 13/14)Changes to Design LawThe UK Intellectual Property Act has received Royal Assent. Some of the most interesting changes relate to design law. These include the introduction of criminal sanctions against blatant copying of UK registered designs in the course of business, cheaper options for appeals from decisions of the UK IPO on registered designs, consistency with EU design law on matters such as ownership and prior user rights, and the provision of a UK IPO opinions service on designs, to supplement the existing service relating to patents.
Whilst the Act is now officially law, most provisions will not come into force until 1 October 2014, whilst others will take effect in 2015.
For further information, please see the article on 'UK IP law gets a makeover' from Barker Brettell LLP here.
Source: www.barkerbrettell.co.uk Jul 22, 2014 (Newsletter Issue 12/14)No Re-Introduction of Fast Track ExaminationThe Intellectual Property Office (IPO) has published the Government response to the consultation on whether to re-introduce the fast track examination for UK trademarks.
The Government decided not to reinstate the fast track service after the outcome of the consultation due to the lack of demand amongst users of the system. The responses that were received outlined that users are content with the routine examination procedure, and associated timescale, which is currently offered by the Office.
To access the response document, please click here
Source: www.gov.uk
Mar 18, 2014 (Newsletter Issue 5/14)
IPO Joins Similarity
The UK Intellectual Property Office (IPO) has joined the Similarity tool.
Similarity is a common database of comparisons of goods and services that allows users to assess whether given goods or services are considered similar or dissimilar – and to what degree – according to the practice of the participating IP offices. Similarity benefits users by bringing more transparency to the decision-taking process of EU national offices and OHIM. Similarity also improves the predictability of opposition decisions.
Source: www.tmdn.org
Mar 04, 2014 (Newsletter Issue 4/14)Fast Track Examination Consultation OpenThe Intellectual Property Office (IPO) has informed its users about a new public consultation on whether there is a need to re-introduce the fast track examination procedure.
The fast track examination service of trade marks came into effect in April 2008 and was suspended in 2009, due to a combination of low take up and the short time to examination using the standard procedure, at that time. In late 2012 the idea of reintroducing the service was raised but, since then, circumstances have changed and the introduction of a new IT processing system in early 2013 has meant that examination periods using the standard procedure are again very short.
For further information, please check here. Comments can be sent to 'fasttrackresponse@ipo.gov.uk' until 15 April 2014.
Source: www.ipo.gov.uk and www.gov.uk Feb 04, 2014 (Newsletter Issue 2/14)New Practice to Trademark ProceedingsThe United Kingdom Intellectual Property Office (UKIPO) has issued a new Tribunal Practice Notice (TPN 1/2014) relating to the relevance of colour to a mark registered in black and white but used extensively in a particular colour or colours.
For more information on the new Tribunal Practice Notice please click here
Source: www.ipo.gov.uk
Dec 03, 2013 (Newsletter Issue 17/13)Trade Marks (Isle of Man) Order 2013 in ForceThe Trade Marks (Isle of Man) Order 2013 from 9 October 2013 has been in force since 11. November 2013.
This Order modifies the Trade Marks Act 1994 in its application to the Isle of Man. It replaces the Trade Marks Act 1994 (Isle of Man) Order 1996 (S.I. 1996/729) as amended, and makes additional modifications to correspond to the amendments made to the Act (as it has effect in the United Kingdom) by the Trade Marks (International Registrations Designating the European Community, etc.) Regulations 2004 (S.I. 2004/2332), the Serious and Organised Crime and Police Act 2005 (c.15), the Intellectual Property (Enforcement, etc.) Regulations 2006 (S.I. 2006/1028), the Trade Marks (Earlier Trade Marks) Regulations 2008 (S.I. 2008/1067) and the Legal Services Act 2007 (Functions of an Approved Regulator) Order 2009 (S.I. 2009/3339).
For more information, please check The Trade Marks (Isle of Man) Order 2013
Source: www.legislation.gov.uk and Squire Sanders (UK) LLP, UK Oct 01, 2013 (Newsletter Issue 14/13)New Fast-Track TM Opposition ProcedureThe Trade Mark Rules 2008 has been amended to provide for an additional fast track opposition procedure under the Trade Mark Act 1994. The new procedure is available from October 1, 2013.
The main points of the new fast-track opposition are as follows:
- The opposition is based solely on relative grounds under sections 5(1) and/or 5(2) of the Trade Marks Act 1994, namely that the opponent owns an earlier trade mark application or registration protecting a trade mark that is either identical or similar to the applied for mark and, except in cases of double identity, there exists a likelihood of confusion between the marks. The fast track procedure will not be available in cases where the opponent seeks to rely upon alternative grounds. The number of earlier marks which can be relied upon in a fast-track opposition is limited to three UK or Community marks.
- Where a fast-track opposition is based on a trade mark registration that was more than 5 years old at the date of publication of the application under opposition, proof of use of the earlier registered mark must be filed with the Opposition. Where the requirements of a fast-track opposition in this regard are not met but the requirements of a conventional opposition are, the registrar shall have discretion to treat a fast-track opposition as a conventional opposition.
- Leave must be obtained to file any evidence other than the Proof of Use submitted with the opposition.
-The official fee for the filing of a fast track opposition is £100. The official fee for a conventional opposition is reduced to £100 from October 1, 2013, provided that the opposition is based only on sections 5(1) or 5(2) of the Act.
- Provision will be made for an oral hearing where requested by either party and deemed appropriate by the Hearing Officer, or where initiated by a Hearing Officer. Hearings may be conducted by telephone rather than in person.
It is expected that the fast track opposition proceedings lasts approx. 6 months in contrast to the 12-18 month duration of standard opposition proceedings.
For more information, please check The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 and The Trade Marks (International Registration) (Amendment No. 2) Order 2013
Source: Dehns Patent and Trade Mark Attorneys, UK;
www.ipo.gov.uk and www.legislation.gov.uk Jul 01, 2013 (Newsletter Issue 10/13)Accession to Vienna ClassificationThe Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the United Kingdom of Great Britain and Northern Ireland, on 11 June 2013, of its instrument of accession to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, done at Vienna on June 12, 1973, as amended on October 1, 1985.
The said instrument of accession contains a declaration that the United Kingdom of Great Britain and Northern Ireland intends to avail itself of the reservation provided for in Article 4(5) of the Agreement.
The said Agreement will enter into force, with respect to the United Kingdom of Great Britain and Northern Ireland, on 11 September 2013 and can be entered here
Source: www.wipo.int Apr 15, 2013 (Newsletter Issue 5/13)
New TM Law in VG Expected
The publication of the Proclamation in the Government Gazette to implement the new Trade Marks Act, 2013 is expected. This will repeal the Trade Marks Act (Cap. 158) and the Registration of United Kingdom Trade Marks Act (Cap. 157).
Once the new Act is effective, the existing ‘dual’ registration system, which provides for the filing of either independent or UK-based applications, will be replaced by a single system for filing independent registrations.
In brief, the following changes are expected:
- Provision for the registration of service marks
- Provision for the registration of collective and certification marks
- Adoption of the Nice Classification (10th Edition)
- Revision of the renewal term from 14 to 10 years
Source: Spoor & Fisher, South Africa
Apr 15, 2013 (Newsletter Issue 5/13)Consultation for Fast Track Opposition ProcedureThe Intellectual Property Office (IPO) has today launched a public consultation on the introduction of
1) an opposition ‘fast track’ procedure within the Trade Mark Tribunal, and
2) a refundable appeal fee for inter partes appeals to the Appointed Person
The consultation seeks views on the appropriate procedural changes and closes on 17 May 2013.
Through the fast track procedure business can oppose the registration of new trade marks if the mark appears to be the same as, or too similar to their own existing mark.
The fast track seeks to improve access to opposition proceedings by reducing the cost, complexity and increasing the speed at which business can protect their trade mark rights.
For more information, please click here
Source: www.ipo.gov.uk
Apr 02, 2013 (Newsletter Issue 4/13)Time Periods/Opposition Periods ChangedThe United Kingdom Intellectual Property Office (UKIPO) announced that the Trade Marks and Registered Designs (Amendment) Rules 2013 and The Trade Marks (International Registration) (Amendment) Order 2013 came into force on 31 March 2013.
In terms of the amendment to the opposition period, this applies to any period that was still open on or after 31 March 2013. This means that for any UK trade mark application or UK designation of an IR that is published on 1 February 2013 or afterwards, the opposition period lasts for 2 months gross (ie: a trade mark application published on 1 February is be open to third party opposition until 1 April 2013 - instead of 31 March 2013 under the old regime).
For further information, please click here
Source: Squire Sanders (UK) LLP, UK Apr 02, 2013 (Newsletter Issue 4/13)Online Services EnhancedOn 2 April 2013, the IPO implements enhancements to its online trade mark services. This includes improvements to the online trade mark application, online trade mark renewals, e-correspondence, and the trade marks journal.
Full details can be viewed here
Source: Squire Sanders (UK) LLP, UK Feb 18, 2013 (Newsletter Issue 2/13)Changes to Trademark Services Soon ActiveThe United Kingdom Intellectual Property Office (UKIPO) announced that their new IT system for processing trademarks is going to be implemented in February 2013. The new system will increase the processing efficiencies and introduce some customer enhancements. Changes are to be implemented in two phases, with approximately a 6 week gap between the phases.
For further information and full details, please click here
Source: www.ipo.gov.uk Feb 18, 2013 (Newsletter Issue 2/13)
Protection for Person's Personality in Guernsey
On 3 December 2012 new legislation came into force in Guernsey allowing the protection of ‘personality’ and ‘image’ rights as new forms of intellectual property.
Any natural persons (alive or dead within the last 100 years), legal persons, joint or group personalities and even fictional characters can have their ‘personality’ registered and any photos, moving images, names, signatures, appearances, expressions, voices, likenesses, gestures or mannerisms can also qualify for protection via association or registration as ‘images’.
Source: www.ipo.guernseyregistry.com and Schillings, Uk
Nov 19, 2012 (Newsletter Issue 17/12)
New Trade Mark Law in Montserrat
The implementing Regulations for the Trademarks Act (Cap15:23) 2002 came into effect in Montserrat on 1 November 2012.
Under the new Act, the ‘dual’ registration system which provides for the filing of either independent or UK-based applications remains in place. The changes primarily affect independent applications (bringing them into line with UK-based applications). Some of the changes are:
- Provision for the registration of service marks
- Provision for the registration of collective, certification and series marks
- Adoption of the Nice Classification (10th Edition) (replacing the old British Classification of 50 classes)
- Provision for the recordal of licences
- Revision of the renewal term from 14 to 10 years
- General increase in the official fees
Source: Spoor & Fisher, South Africa/Channel Islands
Oct 16, 2012 (Newsletter Issue 15/12)New Requirements for Merging TMsIn 2010, the UK IPO launched a public consultation which proposed changes to laws governing the merging of trademarks. As a result of this consultation, new requirements for the merging of trademarks have now come into force.
With effect from October 1, 2012, any request for a merger must now meet the following requirements:
- The trademarks must have the same filing date.
- The trademarks must be registered.
- None of the trademarks intended for merger is subject to cancellation proceedings.
- None of the trademarks intended for merger is the base for an international registration still within the 5 year dependency period.
The new form TM17 is available since October 1, 2012 and can be accessed here. The old form TM17 will be rejected by the IPO after December 31, 2012.
For more information of the merger changes please click here
Source: www.ipo.gov.uk Sep 27, 2012 (Newsletter Issue 14/12)
New Trademark Act in Grenada Introduced
The Trademarks Act of 2012 has now come into effect and replaces the Registration of United Kingdom Trade Marks Act Cap 284 of 1939. Under the new Act the UK-based system has been abolished, and there is only provision for independent registration.
Under the transitional provisions existing UK-based registrations shall continue to have effect as if registered under the new Act.
Source: Spoor & Fisher, British Isles
Jul 30, 2012 (Newsletter Issue 12/12)Changes to Trademark ServicesThe United Kingdom Intellectual Property Office (UKIPO) is implementing a new IT system for processing trademarks in order to increase its processing efficiencies and introduce some customer enhancements including more user friendly access to information and web services. Changes are to be implemented in two phases, with approximately a 6 week gap between the phases.
Phase 1
- Notice of Threatened Opposition: New layout e-form TM7A which should be used for filing notices of threatened opposition.
- Notice of Opposition and Statement of Grounds: New layout of form TM7 and available in PDF fillable format.
- New Style Journal: International UK designations and UK applications will be integrated and published in one Journal. The Journal numbering will change (to reflect week and year).
- New Style Examination Report: For International UK designations, taking into account feedback from customers.
Phase 2
- 'Ecaveats' Changes to 'eAlerts': eAlerts has enhanced features allowing customers to monitor the progress or status of a trade mark by requesting alerts for specific events all FREE of charge. This service is also available for International Registrations designating the UK.
- Trade Mark e-Renewal: A new ‘e’ trade mark service for fast, efficient online renewal and payment, using form, eTM11. The service provides timely email receipt acknowledgements, with the Certificate of Renewal emailed as a PDF attachment once payment has cleared.
- Trade Mark e-Application: Some of the changes include i.e. a more user friendly language and better examples to aid customer completion as well as a goods and services classification search tool located within the application process.
For further information and full details, please click here
Source: www.ipo.gov.uk May 29, 2012 (Newsletter Issue 9/12)
Ratification of Singapore Treaty
United Kingdom of Great Britain and Northern Ireland ratified to the Singapore Treaty on March 21, 2012.
In conformity with Article 28(3), the said Treaty will enter into force on June 21, 2012.
Source: www.wipo.int
May 02, 2012 (Newsletter Issue 7/12)New Practice in Trademark ProceedingsThe United Kingdom Intellectual Property Office (UKIPO) has issued a new Tribunal Practice Notice (TPN) relating to the submission of survey and expert witness evidence in UKIPO trade mark proceedings:
This practice notice gives notice that survey evidence and expert witness evidence can only be adduced into trade mark proceedings before the Intellectual Property Office with the permission of the hearing officer. It sets out the criteria which will need to be satisfied for such evidence to be adduced and the nature of that evidence.
The new TPN will be in force on July 16,2012.
For more information, please click here
Source: www.ipo.gov.uk Apr 17, 2012 (Newsletter Issue 6/12)
Change of Address of UKIPO
The Intellectual Property Office London will be located at a new address as of May 21, 2012.
Normal business will be unaffected but any filing of documents after 11.59 p.m., May 20, 2012 should be at the new address:
1st Floor
4 Abbey Orchard Street
London, SW1P 2HT
There will be no change to the telephone numbers for the office.
Source: www.ipo.gov.uk
Feb 21, 2012 (Newsletter Issue 3/12)
Requirement for Local Agent in Cayman Islands Postponed
Although the new Patents and Trade Marks Law, 2011, came into force on December 7, 2011, the Government has now passed the Patents and Trade Marks (Transitional Provision) Regulations which provide that the date for implementation of the requirement to use a local registered agent will be postponed until March 31, 2012.
The Registry will cease to accept instructions from overseas agents or proprietors of patents and trade marks on April 1, 2012. Please see newsletter issue 1/12 for more information on the new law.
The reason for this short postponement is that the regulations which make provision for the application process for registered agents, namely the Patents and Trade Marks Regulations, 2012, (“the Regulations”) were just recently passed on February 3, 2012, some time after the implementation of the Law.
Source: Appleby Intellectual Property, UK
Jan 23, 2012 (Newsletter Issue 1/12)New Patents and TM Law in Cayman IslandsThe new Patents and Trade Marks Law 2011 took effect in the Cayman Islands on December 7, 2011.
Following amendments can be reported:
- A registered agent is now required: Proprietors of patents and trade marks can now only transact business with the Registry of Patents and Trade Marks in the Cayman Islands via a registered agent who must be resident in the Cayman Islands.
- Certificates of Good Standing will now be available: The new legislation provides that the Registry, upon request by a registered agent, may issue a certificate of good standing to evidence that a patent or trade mark has been recorded in the Cayman Islands and that all applicable fees have been paid.
- Annual fees and penalty fees: The new legislation provides that if the annual fee is not paid by March 31 of the relevant year, the right protected will be held in abeyance from April 1 until the annual fee and penalty fee is paid. A penalty is payable when the annual fee is paid after March 31. It should also be noted that in the event that an annual fee and the applicable penalty fee is not paid for more than twelve months, the patent or trade mark in question may be cancelled by the Registrar.
- Renewal of expired patents or trade marks: Proprietors should also be aware that whilst their registered agent may apply for an expired patent or trade mark to be renewed, a renewal application which is made more than two months after expiry will attract a late renewal fee in addition to the renewal fee and any outstanding annual and penalty fees.
- Abandoned patents or trade marks: The proprietors shall inform the Registry, via their registered agent, if a patent or trade mark has been abandoned when the Registry will record the protected right as inactive. Upon payment of a re-activation fee and annual fees the protected right may be revived.
To access the new law, please click here. For further information please also check the article of Mr. Moses from Appleby Intellectual Property here
Source: Appleby Intellectual Property, UK
Further information on Cayman Islands see below (Related Territories). Oct 25, 2011 (Newsletter Issue 12/11)Requirement to Attend Hearings on Invalidation on Relative GroundsThe UK Intellectual Property Office (UKIPO) issued Tribunal Practice Notice (3/2011) which updated TPN (6/2009) concerning the requirement to attend hearings in relation to applications for invalidation on relative grounds.
The registrar does not consider that a mandatory hearing in every such invalidation case is necessary or even beneficial. The registrar will, accordingly, review each invalidation action based on relative grounds, and either direct attendance at a hearing under rule 62(2), or alternatively, suggest instead that a decision be taken from the papers only. In the latter case, the parties will nevertheless retain their right to be heard if they wish.
For more information please click here Oct 25, 2011 (Newsletter Issue 12/11)Report on Trade Mark IncentivesThe UK Intellectual Property Office (UKIPO) has commissioned the report 'Trade Mark Incentives'. It investigates the relationship between trade marking and business performance in terms of productivity, employment, wages and growth.
According to this study, positive linkages were found between trade marking and business performance, which ”indicate[s] that trade mark active firms are different in important and valuable ways from other firms. This should reassure policymakers, who design innovation policy to encourage domestic producers to compete on product quality and variety, not just cost and price, and to use trade marks to signal their innovations.”
To access the full report please click here Aug 12, 2011 (Newsletter Issue 10/11)End of ReclassificationsThe UK Intellectual Property Office (UKIPO) will cease reclassification of trademark registrations effective October 31st, 2011.
The Registrar offered proprietors with UK domestic registrations in Class 42 the opportunity to reclassify the services affected by the restructuring of the Nice Classification. In some cases this required a new class (or classes) to be added to the registration.
The benefits of reclassifying the UK domestic registrations are questionable as Community Trade Marks and International Registrations (designating the UK) are not being reclassified.
Therefore, the UKIPO stops to reclassify trademark registrations. Up to (and including) this date, any owner of a trade mark registration who wishes to have their registration considered for reclassification may contacting the UKIPO. For more information please click here
Source: Marks & Clerk LLP, United Kingdom
Mar 28, 2011 (Newsletter Issue 5/11)Manual of Trademarks Practice UpdatedThe United Kingdom Intellectual Property Office has updated the documents New applications and The Examination Guide: publication and registration.
For more information please click here Oct 01, 2010 (Newsletter Issue 15/10)Opposition Period Reduced by One DayThe UK Intellectual Property Office (UKIPO) has published a new Tribunal Practice Notice 4/2010 which effects the calculation of the oppostion period. The opposition deadlines for UK national trademark applications, the UK designations of trademark applications under the Madrid Protocol and the deadlines to extend the opposition period have been reduced by one day.
This new practice entered into effect on September 30th, 2010.
For more information please click here May 20, 2010 (Newsletter Issue 11/10)Administrative Trademark Fees IncreasedThe United Kingdom Intellectual Property Office increased the administrative fees for recording assignments, licences and security interests, effective April 6th, 2010.
For more information please click here Feb 15, 2010 (Newsletter Issue 7/10)Trademark Invalidation Proceedings ChangedThe UK Intellectual Property Office (IPO) has its handling of trademark invalidation proceedings. The Hearing Officer’s decision will no longer be made on paper. The parties or their legal representatives will be required to attend a full hearing before any decision is made. This is the position only where the challenge to the trademark is made on relative grounds. The IPO’s new approach will likely increase costs for brand owners bringing or defending invalidation proceedings.
For more information please click hereSource: Hammonds LLP, London, UK Jan 27, 2010 (Newsletter Issue 6/10)
Cayman Islands: Increase of Official Fees
From January 1st, 2010 the application fees for extension of trademark rights to the Cayman Islands based on a prior UK registration has been increased from KYD 150.00 to KYD 200.00 (from EUR 132.00 to approx. EUR 176.00).
The annual fee to maintain the trademark registration increased from KYD 100.00 to KYD 200.00 (from EUR 88.00 to approx. EUR 176.00) for one class. Each additional class costs now KYD 100.00 (approx. EUR 88.00).
The legal basis is the Trade Marks Act (TMA) 1994.
Registration provides protection for the trademark in the United Kingdom (UK) of Great Britain and Northern Ireland and automatically extends to the British Indian Ocean Territory, the Falkland Islands, the Isle of Man, and South Georgia and the Sandwich Islands. In the Bahamas, subject to locally acquired prior rights, the owner of a UK trademark is entitled to registration on the production of a UK registration certificate.
Trademark protection is available in the following countries through the extension of an existing UK trademark registration: Gambia, Gibraltar, Jersey, Kiribati, Saint Helena and dependencies, Solomon Islands, and Tuvalu. With respect to Gambia, an application must be filed within 4 months of the UK application date in order to be afforded the UK filing date as a priority date.
In addition to local registration, it is also possible to apply for registration based on a UK trademark in the following countries: Anguilla, Bermuda, Fiji, Grenada, Guyana, Montserrat, Saint Kitts and Nevis, Saint Lucia, Samoa, and Sierra Leone. In Samoa, an application based on a UK trademark must be filed within 12 months of the UK application date.
From January 1, 2021, applicants and holders under the Madrid Protocol may designate the Bailiwick of Guernsey in international applications and in subsequent designations bearing a date of January 1, 2021, or later.
British territories with no trademark law and therefore no extension of UK rights include the Pitcairn Island and the British Antarctic Territory.
The UK is a member of the Madrid Protocol. The UK has left the European Union on February 1, 2020 (23:00 GMT on January 31, 2020).
From January 1, 2021, an address for service in the UK, Gibraltar, or the Channel Islands is required to file a new trademark application and to participate in new oppositions or other proceedings at the UK Intellectual Property Office (UKIPO).
On January 1, 2021, the UKIPO created comparable UK trademarks for all registered EU trademarks. These comparable trademarks retain the same filing date as the corresponding EU trademark, including any priority and seniority dates. The numbers for these comparable UK trademarks of EU trademarks have the prefix ‘UK009’. The UKIPO also created comparable UK trademarks for all protected EU designations of WIPO international registration. The filing and registration date of the comparable UK trademark corresponds to the date on which protection in the EU was conferred. The numbers for these comparable UK trademarks have the prefix ‘UK008’.
Trademark protection is obtained by registration. It can also be acquired by use.
The UK is a common law jurisdiction, i.e., official and juridical decisions on the Trade Marks Act 1994 are rendered on the basis of prior decisions and judgments in similar cases.
Nice classification, 12th edition
Registrable trademarks are signs which are distinctive of the goods and/or services which the application covers and are capable of being represented clearly and precisely, such as words, names, acronyms, letters, numbers, devices, holograms, moving images, colours, colour combinations, patterns, the three-dimensional shape of a product or its packaging (subject to the specific shape marks provisions under s3(2) of the TMA 1994), as well as sound marks and any combination of the mentioned signs.
The following trademark types are registrable: trademarks, service marks, collective marks, certification marks.
The application is filed at the UK Intellectual Property Office (UKIPO).
Multiclass applications are possible.
As of January 1, 2021, a UK address for service (or address in the Channel Islands or Gibraltar) is required for new trademark applications, new oppositions, and other proceedings.
A power of attorney is not necessary.
Foreign applicants do not need a domestic registration.
The application process includes an examination on absolute grounds. Signs not deemed distinctive can be accepted for publication if there is evidence that sufficient distinctiveness has been acquired through use.
The processing time from filing to registration is approximately 4 to 6 months. The examination report is issued within approximately 40 days.
Before registration, the application is published in the weekly electronic 'Trade Marks Journal' for opposition purposes. The trademark will then proceed to registration unless oppositions are filed.
National:The deadline for filing an opposition is 2 months from the publication date of a trademark application in the Trade Marks Journal. This period can be extended for a further month, as of right. To do so, an interested party must file a Form TM7a, Notice of Threatened Opposition, during the initial two-month opposition period.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Upon registration, protection is backdated to the application date. A trademark registration is valid for 10 years from the date of application. The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is GBP 200 in one class and GBP 50 for each additional class. Online applications qualify for a discount of GBP 30 of the total cost. There is no official registration or publication fee.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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