Online public file inspection service for trade marks and designs

At present, to view trade mark and design documents, interested parties can order copies of documents via email and pay a fee (or visit the UKIPO), and only limited details are available online.

The government intends to introduce an online file inspection service for trade mark and design documents, similar to the existing service available for patents. Interestingly, this could include examination reports.

This change should improve the efficiency of conducting research and due diligence. It would also better align the UKIPO’s records capabilities with other IP offices such as the EUIPO. The government notes the new inspection service will take into account concerns about data scraping, confidentiality and AI tools.

Change to inspection of design documents and requests for confidentiality

The government intends to remove the 14-day delay to design documents becoming available for public inspection, so that it is quicker for the public to access published design applications.

When the online public file inspection service launches, the government also intends to amend the trade mark, patent and design rules so that confidentiality requests can be made at any time, by anyone.

It is noted that the current high bar for granting confidentiality requests will not change.

Series trade marks to be discontinued

A series mark is defined as “a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark”. Under the current series mark system, an applicant can apply for up to six versions of a mark that meet the criteria of a series mark.

UKIPO statistics from the last five years indicate that:

• Series applications represented around 10% of all domestic trade mark applications.
• On average, 65% of series mark applications were filed by unrepresented applicants.
• In 2022, 39% of series mark applications filed by unrepresented applicants were objected to and 17% of series mark applications filed by represented applicants were objected to.
• On average, 74% series applications were filed to cover only two versions of a mark.

Many respondents to the second consultation were in favour of retaining at least some protection for series marks. Nevertheless, the government intends to discontinue the series mark service for new applications when the new digital service launches.

The government believes that the majority of users will benefit through simplification of the trade mark application process, with only a small proportion of applicants being adversely affected. Further rationale includes the government’s concerns that the current system is being misused (for example to try and achieve dual protection at a reduced cost for what should be separate applications); and that unrepresented applicants who have difficulty with series mark applications can be financially disadvantaged as there are no refunds issued for invalid series applications. Importantly:

• Existing series marks will remain valid.
• It would still be open to applicants to file for two (or more) separate trade mark applications to cover variants of a mark, which may be appropriate to consider in certain cases, for example to support priority claims in other territories.
• It is anticipated that this change will create harmonisation, as often series marks are not an option in international trade mark systems.

We can expect transitional provisions and guidance to be issued in due course. The government also intends to monitor the impact of this change.

Encouraging mediation in IPO tribunal proceedings

The UKIPO already encourages parties to mediate during IPO tribunal proceedings. Respondents were not in favour of compulsory mediation and it was noted that professionally represented parties resolve many cases via negotiations.

From Summer 2025, the UKIPO will pilot the use of mediation information and assessment meetings (MIAMs) for some disputes in cases where both parties are unrepresented. The government will also further explore the power of hearing officers to encourage voluntary mediation.

It is possible that this service may be extended to represented parties in future and if so, we expect further information and guidance to be issued.

Implementation

Development of the new trade mark, design and IPO tribunal services is expected to start in Autumn 2025. The UKIPO also intends to launch its updated digital patent service later in 2025.

Related article

“UKIPO One IPO Transformation Programme second consultation, a trade mark and design update”: dycip.com/ukipo-transformation-consult2

Useful links

UKIPO press release, “Government publishes second transformation consultation response”: dycip.com/ukipo-transformation-news