UK IPO consultation on trade mark and design 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. This second consultation focuses on specific trade marks and designs issues, but also includes some proposals on patents and tribunals. 

Below are some of the issues covered by the consultation. Readers can respond to the consultation with their views on these topics, before 11:59am on 31 October 2023.

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 appears 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, the UK IPO is 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 This will remove the outdated requirement for members of the public to attend the IPO’s offices in person or order copies of documents to view this information.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 in 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.

Next steps for the new trade marks and designs services 

As stated, the consultation marks the start of the next phase of the UK IPO's 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 by emailing usertesting@ipo.gov.uk. 

The consultation document, and details of how to respond can be found here.