What has happened?
- As part of its transformation programme (launched in 2021) and recent consultation, the UKIPO will make some changes to the substantive and procedural law affecting trade marks and designs.
- Key changes include abolishing series marks, providing online public document inspection for trade marks and designs, streamlining requests for confidentiality, and introducing new measures to promote mediation.
Want to know more?
Abolition of series marks
The biggest change to be implemented is that the UKIPO will no longer be allowing series mark applications. Currently, an applicant can file up to six variations of a trade mark (which differ only in non-distinctive elements) as part of the same application and thereby pay only one application fee. This will no longer be possible. However, existing series mark registrations will not be affected by the change.
Many respondents were in favour of keeping series marks due to its cost-effectiveness for filing multiple variations of a mark (eg filing multiple logos in different colours) and administrative benefits (eg renewing one registration for multiple logos). However, the IPO cited several disadvantages of the system including unnecessary complexity in the application process, applicant's falsely believing that series marks provide protection for multiple distinct trade marks, and the large number of objections raised against series mark applications (eg in 2022 65% of series mark applications were filed by unrepresented applicants and 39% of these applications received objections).
The IPO will monitor the impact of the removal.
What should applicants who rely on series marks do?
The changes are not expected to be implemented until September 2025 at the earliest so there is plenty of time for applicants to continue to file applications for series marks.
Going forward, those using series marks will need to consider the alternatives. The best approach will depend on the marks in question. Those who use series marks to register different colour variations (eg for a logo or shape) should consider registering the mark in black and white or greyscale instead. However, it should be remembered that this does not necessarily provide protection for all colour combinations (see eg the Common Practice). In particular:
- An earlier trade mark in black and white or greyscale is not identical to the same mark in colour unless the differences in colour are insignificant – this can be relevant for enforcement. Only very minor differences (that would only be perceived when the marks are compared side to side) are considered insignificant. This is linked to the notion that a mark registered in black and white or greyscale does not cover all possible colour combinations. However, the practical impact of this is mitigated to some degree by case law which says that, where a mark is registered in black and white but used in a particular colour that is associated with the trade mark owner, then that colour is relevant to the infringement analysis (Specsavers v Asda).
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Where a trade mark is registered in black and white or greyscale, the use of the same mark in colour (and vice versa) does not constitute genuine use unless the change in colour does not alter the distinctive character of the mark as registered. For this to be fulfilled, generally, the contrast of shades must be respected and the colour must not possess distinctive character of itself or be one of the main contributors to the overall distinctiveness of the mark.
The implications of the above will vary depending on the mark in question. In some cases, filing separate applications for the mark in black and white/greyscale and colour (or just one or the other) will be merited.
Online public document inspection
Another key takeaway is the government's plan to introduce an online service for accessing trade mark and design documents, including examination reports. This will be via the new "One IPO Search" tool and will replace the current system where documents have to be requested directly from the IPO.
The goal of the new online inspection system is to encourage transparency and efficiency when accessing trade mark and design records.
Confidentiality requests
The government also intends to change the rules on confidentiality requests. Currently, published trade mark and patent applications generally become available to public inspection upon filing, whereas designs have 14 days before they become available for public inspection. Following the consultation, the government will amend the rules so that the 14-day delay for designs will be removed and requests to keep trade mark information confidential are able to be made by anyone at any time.
Mediation
Another development is the UKIPO's plans to trial a new mediation service called "Mediation Information and Assessment Meetings" which aims to encourage use of mediation services and take the pressure off proceedings at the IPO Tribunal. The trial will begin in Summer 2025 for disputes where there are unrepresented parties on both sides.
If you would like advice on any of these issues, please speak to a member of our team or your usual Taylor Wessing contact.
