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UKIPO One IPO Transformation Programme second consultation: a trade mark and design update

The UK Government has launched a consultation on how the trade mark and design system can deliver better digital services. The consultation marks the next stage of the “One IPO Transformation Programme”, a five-year initiative to modernise and improve the existing services, policy and practice of the current UK intellectual property system.

For an overview of the One IPO Transformation Programme, please see our earlier article “Launch of the UKIPO One IPO Transformation Programme”.

The UK Intellectual Property Office (UKIPO) is calling for views on key trade mark and design issues, including:

  • online public document inspection,
  • document inspection/confidentiality, and
  • series trade marks.

The consultation is open until 11:59am on 31 October 2023.

Online document accessibility

As the UKIPO progresses toward digitising and modernising its services, it seeks to improve public accessibility to documents and address existing issues and disparities within the current system. It proposes to introduce an online document inspection service for trade marks and designs, similar to the Ipsum service for patents.

For patents, the Ipsum service allows free online access to patent-related documents. However, no such facility exists for trade marks and designs. The current system is not as convenient or efficient, requiring parties either to physically visit the UKIPO or request copies through a paid service. Moreover, online there are only limited bibliographic details of trade mark and design documents. While the current system offers some privacy advantages, the consultation suggests that the process is inefficient and documents are not as readily accessible as they should be, particularly for overseas parties.

The proposed online document inspection
service aims to make documents easily accessible, although certain documents would remain confidential. Also, the UKIPO suggests allowing applicants and third parties to seek the removal of documents due to the presence of sensitive or personal information, in an attempt to balance transparency and privacy.

For practitioners, a new online service could significantly improve the efficiency of conducting research and due diligence, thereby facilitating quicker decision-making.

Confidentiality requests

For trade mark and design documents, confidentiality is assessed by the UKIPO on a case-by-case basis. The consultation acknowledges that the current system suggests a lack of standardised procedures, potentially leading to inefficiency and oversights.

The UKIPO’s proposed changes would align with existing provisions for patents, including introducing a post-filing window of 14 days to make a confidentiality request and allowing third parties to do so.

As more data become digitally available, these changes are likely to be welcomed by practitioners and rights holders alike, especially when commercially sensitive data are involved.

Series marks

Under a single application, applicants can currently file up to six variations of a trade mark as a “series mark”. When filed correctly, series marks provide a more cost-effective and streamlined process and, in particular, can be beneficial for businesses and brands striving to maintain a cohesive brand image. However, the convenience of the current system has led to increased rates of objections and unintended misuse, particularly among unrepresented applicants. For instance, many applicants file unrelated trade marks under a series, possibly aiming to take advantage of reduced costs for dual examination. The consultation indicates that the misuse of series marks raises concerns about the integrity of the system and questions whether series marks really do offer more legal protection compared to standalone trade marks. To address these issues, the consultation presents three
possible pathways for the UKIPO to take:

  1. Retain the current system.
  2. Limit the number of marks in a series.
  3. Discontinue series marks altogether.

In theory, reforming the framework of series marks could lead to a more straightforward and efficient system, allowing for better resource allocation and reducing the likelihood of objections; however, the UKIPO needs to ensure that it continues to deliver value to customers.

The UKIPO’s determination to engage in reform demonstrates a commitment to addressing longstanding issues and recalibrating the system for clarity, efficiency, and fairness. Input to the consultation process from legal practitioners and brands holders alike will be integral in shaping the future of intellectual property practice in the UK, ensuring that the UK remains one of the best places in the world to protect and enforce valuable corporate assets.

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