Author
Louise Popple

Louise Popple

Senior Counsel

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Author
Louise Popple

Louise Popple

Senior Counsel

Read More

21 November 2022

Brands update - November 2022 – 5 of 6 Insights

UKIPO consults on changes to key processes

The government has launched a consultation about possible changes to UKIPO systems and processes as part of its digital transformation project. 

The proposed changes to tribunal processes (in Part B of the consultation) are the most wide-ranging and interesting. These include giving the UKIPO an explicit power to expedite hearings, providing hearing officers with an express power to strike out and grant summary judgment, clarifying the powers of hearing officers in relation to disclosure and witnesses and improving the system for enforcing unpaid costs orders.

The consultation is open for responses until 6 January 2023. Key issues are discussed briefly below.

Part A: Automation of UKIPO systems and processes including:

  • Greater use of AI and automation for processes such as validating and authenticating customer details, assessing application contents, checking the goods/services classification of trade marks and providing automated help and guidance to customers. Formal examination of trade mark and design applications would not be automated.
  • Making digital certified office copies available for designs (as they are currently for trade marks) and harmonising the process and cost for obtaining them across IP rights (whilst preserving the option of obtaining paper certified office copies where required).
  • Extending the use of WIPO's international priority document exchange service to trade marks and designs. This provides participating offices with an alternative to supplying paper priority documents. Priority documents are shared electronically, which is quicker and reduces costs for applicants. 
  • Extending the areas in which the comptroller/registrar can make directions. The UKIPO already has the power to make directions on the content of its forms, its hours of business, and the electronic filing of documents. To help make the IP framework more flexible and agile, the government wants to explore whether the comptroller/registrar could have powers to make directions in other areas.
  • Extending the hours of business of the UKIPO, potentially to 7 days per week.
  • Modernising fee structures including harmonising fees across IP rights, aligning the period for paying renewals fees across IP rights and making it easier for the UKIPO to cease charging fees for certain actions.
  • Standardising the evidence requirements for IP transactions across IP rights.
  • Providing represented customers with greater control over their representation such as allowing represented customers to retain certain activities for themselves or to carry out all activities.
 

Part B: Improving the UKIPO Tribunal function including:

  • Giving the UKIPO explicit powers to expedite hearings since its power to do so is currently unclear. Disputes between parties are normally decided within 12-14 months of being launched, but sometimes decisions are needed earlier.
  • Replacing the initial statement of grounds check with a process for requesting clarification. The UKIPO currently checks a statement of grounds for clarity and that it meets the formal requirements for acceptance. The clarity check could be replaced with a process for the other party to request clarification where needed. The UKIPO notes that only a third of disputes are defended so the time it spends checking for clarity is often "wasted".
  • Creating a statutory obligation on parties to disputes to copy the other party into certain tribunal correspondence. While this is currently provided for in the Rules, it is often not complied with. An explicit obligation is therefore being considered. If a party fails to do copy the other side, the correspondence would not be considered. Other potential sanctions include costs consequences and (in extreme cases) strike out. 
  • Improving enforcement of unpaid costs orders. The UKIPO currently has no powers to enforce costs orders. Instead, the successful party must take action in the civil courts to recover its costs. The situation could be improved by bringing UKIPO costs orders into the system for registering orders in a similar way to CCJs. The system for enforcing damages awards would not be altered.
  • Providing for cross-appeals in Appointed Person cases. There is currently no explicit process for cross-appeals and those raised in response to an appeal are often filed out of time. This means that an extension of time must be obtained, which only the Registrar, not the appointed person, has power to order. These issues could be overcome by providing a specific process for cross-appeals. 
  • Harmonising and clarifying the powers of UKIPO hearing officers across IP rights particularly in relation to disclosure and witnesses. It is not intended that contempt of court proceedings should be available for failure to comply with a hearing officer's order.
  • Requiring that a party obtain the hearing officer's permission to appeal an interim decision separately to the main decision for designs and patents (as is currently the case for trade marks).
  • Providing hearing officers with an express power to strike out and grant summary judgment in trade mark and design cases and making it clear that such power can be exercised of their own motion (without any of the parties raising the issue).

In this series

Trade mark registration & portfolio management

Vendôme: From a city name to a selling point

Flash IP

24 October 2022

by Marc Schuler, Pauline Albouy

Brands & advertising

UKIPO consults on changes to key processes

21 November 2022

by Louise Popple

Brands & advertising

Brands Update

21 November 2022

by Louise Popple

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