IPO launches a consultation on new trade marks and designs services
The UK Government has launched a second consultation on proposed changes to allow the Intellectual Property Office to deliver better digital services. In July, the government concluded its first transformation consultation. The new consultation focuses on specific trade marks and designs issues, but also includes some proposals on patents and tribunals.
Series marks the new consultation includes proposals to change or abolish series marks. Series marks allow customers to apply for up to six similar trade marks at a reduced cost – for example, the same logo in different colours. They represent around 10% of all domestic trade mark applications. Series mark applications have high objection rates for not being used correctly – 39% for unrepresented customers and 17% for represented customers. This suggests many customers have difficulties with filing series marks. While series marks are widely used, the additional value or legal protection these add for trade mark customers is unclear.
More mediation within tribunals – The government is exploring ways to encourage more mediation within the IPO tribunal service, as part of the new digital service for hearings and tribunals, launching in 2025. The IPO actively encourages parties to mediate, as a quicker and less costly alternative to litigation. As part of this consultation, we are keen to hear views on possible changes that could enable more mediation to be used during all IPO tribunal proceedings, and how such changes could work.
New online document inspection service – The government is proposing to introduce a new digital service that will allow the public to view documents relating to trade mark and design applications online for the first time. This will remove the archaic requirement for members of the public to attend the IPO’s offices in person or order copies of documents to view this information. This proposal will make it easier for the public to access information about IP.
Public inspection of documents and requests for confidentiality – The government proposes to bring trade marks and designs legislation into line with patents legislation on confidentiality of information and public inspection of documents.
Inventors’ addresses – The government is considering no longer publishing full addresses of inventors for UK patents, instead publishing only country and place of residence. The applicant’s full address and the address for service will continue to be published.
Supplementary Protection Certificate (SPC) fee payment periods – Fees for an SPC must be paid for in a single payment before the SPC may take effect. The government is exploring extending the period in which SPC fees must be paid.
Adam Williams, IPO CEO said:
“The One IPO Transformation Programme is not just about better digital services, but also updating the legislation, policy and practice that underpins the IP system. This consultation is the next important step on that journey. The consultation also marks the start of the next phase of our work to deliver the new digital trade marks, designs, and tribunal services. We are excited to work with customers to shape the new services.”
Matt Dixon, Vice-President of the Chartered Institute of Patent Attorneys (CIPA) said:
“CIPA welcomes the IPO’s further consultation on its proposed changes in the One IPO Transformation project. Development of the IP system to continue to match the practices and expectations of applicants and their representatives is important for maintaining the efficiency of the system.
We are pleased that the IPO continues to seek and carefully consider the views of experienced users before implementing changes and we encourage all users, in particular our members, to contribute fully to this consultation.”
Dids Macdonald OBE, CEO of ACID said:
“Making positive changes in the digital age to simplify the lives of those who register trade marks and designs will be an enabler to use IP as a positive force for growth through improved services. A new focus on mediation is welcomed as a cost effective and more positive way of dealing with alternative dispute resolution without having to resort to expensive legal fees. I would urge all creators who register designs and trade marks to take the time to give their views. In helping the IPO, this will improve IPO services for all and, especially from a user’s perspective.” Respond online here.
Rachel Wilkinson-Duffy, President of The Chartered Institute of Trade Mark Attorneys (CITMA) said:
“The One IPO transformation project is complex and ambitious and is set to revolutionise how IP rights are filed and managed. It is particularly exciting that the work on the trade marks and designs elements is about to begin, and this consultation is an opportunity to shape how that work will look.
Following the previous consultation on transformation, the UK IPO has taken on board feedback from the IP profession, including CITMA, resulting in several improvements. This is why it’s important for users of the IP system to contribute to the consultation process and help shape the final service.”
Next steps for the new trade marks and designs services
- The consultation marks the start of the next phase of our work to develop new digital trade marks, designs, and tribunal services, launching in 2025.
- Alongside the consultation, the IPO will start research to understand what tribunal, trade mark and designs customers need from the new digital services. Customers can register to take part in this research.
- You can respond online or find more information on our consultation webpage.
1) More information about the One IPO transformation programme is available.
2) Development of the IPO’s new digital patents service is approaching its final stages and planned for a spring 2024 launch.
3) IPO will summarise all responses and publish this summary on GOV.UK. The summary will include a list of names or organisations that responded, but not people’s personal names, addresses or other contact details.
4) The IPO will also be meeting with stakeholders as part of this consultation process.
5) The statistics provided on series marks relate to data from 2022.