Protecting trade marks for NFTs, virtual goods and services in the metaverse

The popularity of non-fungible tokens (NFTs) and the provision of virtual goods, and services, in the metaverse continues to grow. So how can we protect trade marks for these new assets and services?

The UK Intellectual Property Office (UK IPO) has just issued new guidance on the classification of trade marks for NFTs, virtual goods, and services provided in the metaverse.  The new guidance (set out in UK IPO Practice Amendment Notice (PAN) 2/23) has been prompted by a significant increase in applications filed at the UK IPO to register trade marks for these evolving goods and services, and it seeks to provide some clarity in this area.

Two IP trade mark attorney, Rachel Havard, discusses the new guidance and what it means for UK trade mark applications.

Non-fungible tokens/NFTs

The UK IPO defines these as “unique and unalterable digital authenticity certificates of ownership for virtual or physical assets such as art, collectibles and gaming”, adding the Cambridge Dictionary definition of them, as “a unique unit of data (the only one existing of its type) that links to a particular piece of digital art, music, video etc. and that can be bought and sold”. 

The UK IPO will not accept “NFT” or “non-fungible token” as a specification term in its own right, especially due to the inextricable link of an NFT to an asset (usually digital) to which it relates, and as this would lead to a lack of clarity if the NFT is not stated as linked to a specific asset.  The PAN confirms that the following would be acceptable in class 9:

  • Digital art authenticated by non-fungible tokens [NFTs];
  • Downloadable graphics authenticated by non-fungible tokens [NFTs];
  • Downloadable software, namely, [list the type of goods], authenticated by non-fungible tokens [NFTs];
  • Digital audio files authenticated by non-fungible tokens;
  • Downloadable digital files authenticated by non-fungible tokens [NFTs].

It is recognised by the UK IPO that NFTs may not always relate to digital assets, and they might be used to authenticate physical goods.  Thus, the following specification terms could be accepted, using the class to which the physical goods would be proper:

  • Artwork, authenticated by non-fungible tokens [NFTs] [Class 16];
  • Handbags, authenticated by non-fungible tokens [NFTs] [Class 18];
  • Training shoes, authenticated by non-fungible tokens [NFTs] [Class 25].

Additionally, retail of NFTs in on-line market places could be acceptably covered by the following class 35 terms:

  • Retail services connected with the sale of [e.g. virtual clothing, digital art, audio files] authenticated by non-fungible tokens;
  • Provision of online marketplaces for buyers and sellers of goods and services which are authenticated by non-fungible tokens.

Other NFT descriptions may be acceptable, but would require consideration on a case-by-case basis, and to assess the most appropriate class for them.

Virtual goods

Virtual goods are seen by the UK IPO as consisting essentially of data such as images, which would be proper to class 9 rather than to classes where their physical counterpart might be found; but such terms would still need to comply with requirements of clarity and precision, to be acceptable.  The UK IPO would therefore require clear definitions of what the goods are, such as:

  • Downloadable virtual clothing, footwear, or headgear;
  • Downloadable virtual handbags.

Virtual services, including those provided in the metaverse

In contrast with virtual goods, deemed acceptable by the UK IPO for placement in class 9, the UK IPO indicates that ability to provide some services by virtual means should not alter the class in which that service might historically have been placed, e.g. had it been provided in person.  On this basis, the following services descriptions would be acceptable:

  • Education and training services delivered by virtual means [class 41];
  • Conducting interactive virtual auctions [class 35].

With the metaverse being a type of digital reality, where services might be provided just as they could be in the physical world, the UK IPO indicates that services provided in the metaverse could be protected in the same class as for more traditional forms of delivery.  The following examples are given:

  • Education and training services provided via the metaverse [class 41];
  • Conducting interactive auctions via the metaverse [class 35].

The UK IPO identifies limitations to this approach in case, say, a trade mark were sought to be registered for the provision of food and drink in the metaverse: the traditional form of these services would be placed in class 43, but this is seen as inappropriate for metaverse equivalents where the food or drink is to be “consumed” inside the metaverse, e.g. by an avatar, rather than physically consumed outside of it, albeit where the food or drink might have been ordered by virtual means.  Examiners are likely to seek further clarification if a service is specified for provision via the metaverse, if not immediately apparent that the service itself could be provided within the metaverse. 

There is potential, too, for services to fall into a more general category, such as:

  • Entertainment services, namely, provision of a virtual reality or metaverse based simulation gaming service.

Responding to official objections or avoiding them from the outset

Should specifications of goods and/or services require further clarification in an Examiner’s view, they will set a two-month period for response and with the applicant also having the right to a hearing.

The UK IPO is returning to its previous swift turnaround times in examination of trade mark applications, but it is preferable to pre-empt or avoid objections wherever possible, including with careful drafting of specifications of goods and services prior to the filing of new applications. 

Two IP’s chartered trade mark attorneys are well equipped to assist you in reviewing the goods, services, and market of interest to you, and in making appropriate preparations for as smooth an application process as possible when seeking to protect your trade marks. Get in touch here or email hello@two-ip.com

Certainty lost – the EU’s plan for Standard Essential Patent adjudication

On the 1st June 2023, the Unified Patent Court (UPC) will come into force. Created by the Agreement on a Unified Patent Court (UPCA) which was signed in 2013, it is the culmination of decades of political efforts to create a common patent court for participation by members states of the European Union. Evidently affected by Brexit, and the resultant inability of the UK to participate, it still strives to provide a streamlined and efficient mechanism for post-grant actions involving European patents. When it opens its doors in June it will initially hear cases involving infringement and revocation actions, and a single court ruling will be directly applicable in the EU member states which have ratified the agreement- currently 17 member states.

The focus of this Court is patents – and only patents. It will have both legally and technically qualified judges. They will be trained centrally to ensure consistency in judgement. They will sit in panels of three at the Central Courts of First Instance, or five in the Court of Appeal. Currently there are 34 legally appointed judges and 51 technically appointed judges. The structure appears well thought out and rationalised. It will base its decisions on EU law, the European Patent Convention, the UPCA, other international agreements applicable to patents, and national law.

All in all, the UPC is to be welcomed as an adjudicating body in Europe for patent matters in Europe. Why then, has the European Union recently announced that it is not the UPC but the EU Intellectual Property Office (EU IPO) that will maintain a register of Standard Essential Patents (SEPs) and oversee royalty rate settings for those patents. The EU IPO has proven to be a very effective organisation for delivery of unitary trade mark and design rights across Europe – but has no experience of patents.

The UPC, an organisation which has been populated with technical experts in patent law and the underlying technical subject matter of these patents would appear to have been a more logical choice for such an adjudication body, if such a body was even needed. The question as to why it is being side tracked to allow the EU IPO, which has no practical expertise in this specialised area, to take control needs to be asked. It could well be that the Commission have considered that the UPC would be conflicted by adjudicating on royalties at the same time as having a primary purpose to assess infringement of potentially the same patents. It could equally well be that it was simply not considered on the basis of a lack of understanding as to what the EU IPO currently do. The lack of explanation as to why the EU IPO is being selected, or even the plan for how it will operate in parallel with the UPC, the EPO, and the CJEU on these matters is not clear. With absent clarity of purpose, this plan can only create uncertainty – the exact opposite of what patent right holders thought they were getting in 2023 with the birth of the UPC.

Two IP’s patent attorneys have expertise in drafting and prosecuting telecommunications related patents, including standard essential patents. Get in touch here if you require assistance in this technology

New EU Digital Services Act – Regulation of Online Intermediaries

The Digital Services Act (hereafter “the Act”, or “the DSA”) is a huge leap forward in the regulation of online intermediaries. Approved on 27 October 2022, the Act (Regulation (EU) 2022/2065, DSA) began to come into effect in February 2023.

Organisations including social media platforms, marketplaces and search engines face increased obligations relating to trader verification and transparency, monitoring and reporting of illegal content or products, and advertising. And the bigger the organisation, the wider the obligations.

The Act applies to providers of digital services to EU consumers (whether based in the EU or not), with fines for non-compliance set at up to 6% of a provider’s annual turnover. Its intention is to protect consumers from illegal or harmful content in any form, but the impact on counterfeit goods and on brands affected by this ever-increasing problem could be enormous.

Liability of online intermediaries has been limited until now, creating ambiguity and frustration for brand owners tackling counterfeit goods and illicit content, with platforms not adequately held to account. The new requirements are set to change that, to the benefit of brand owners and consumers alike. Although only applicable to the EU market, the changes required by providers will doubtless be adopted across other territories, whether voluntarily by the provider or enforced under local supporting legislation. Similar legislation for retailers is being rolled out in the US, in the form of the Integrity, Notification and Fairness in Online Retail Marketplaces (INFORM) for Consumers Act which was made law in late 2022.

The EUIPO recently held an informative webinar detailing the changes and their impact on online service providers, and we share some of the key points in this article.

It showed a fascinating timeline of the rise of the internet since the last legislation, the E-Commerce Directive, was adopted in 1999.

It is alarming that Facebook and Twitter have been available for around 15 years and only now is legislation catching up to protect users from potentially harmful content or products. Advances in the ways and extent to which online content is consumed have far exceeded the laws that govern them, and the need for reform to manage this new world that has sprung up online over the past two decades is evident.

The new EU-wide rules aim to protect consumers online and ensure that businesses can compete fairly. In practice, this means that:

  • illegal content can be removed faster;
  • sellers of illegal goods will be more easily identified;
  • tech giants will need to mitigate the risks created by their algorithms;
  • sanctions for non-compliance may be imposed.

The E-Commerce Directive imposed little liability on online intermediaries, such as ISPs, search engines, social media sites, marketplaces, domain hosts and cloud services. The DSA introduces increased liability for each of these intermediaries. For very large online platforms (over 45 million monthly users) there are specific additional obligations.

Enforcement of the DSA will be the responsibility of the relevant national Digital Services Coordinator (which will be appointed within each member state), the European Board for Digital Services and ultimately the EU Commission.

Under the Act, all online providers must follow rules such as:

  • Utilise standard ‘notice and action’ system, allowing consumers or brands to raise a complaint about offending content;
    • Implement a ‘trusted flagger’ system, enabling certified organisations or individuals with competence and experience to have notices of offending content dealt with as priority;
    • Redress mechanisms available to notice providers to challenge a platform’s decision to remove (or not remove) content, with the platform liable for the costs of any necessary court proceedings decided in favour of the notice provider;
    • EU representatives required if providers are not established in the EU, allowing more effective enforcement;
    • Repeat infringers’ policy to suspend accounts of anyone frequently uploading illegal content, and also applying to repeat notice givers who may repeatedly complain without reason or legal basis;
    • Increased transparency, including annual reports on how content is removed, ranked, recommended and advertised;
    • Know Your Business Customer – the need to identify the third party seller with random checks being implemented.

Very Large Online Platforms and Very Large Online Search Engines are the first to be liable under the DSA, 4 months from when they are designated as a VLOP or VLOSE with the first obligations having begun in February 2023. They are liable under the full obligations of the DSA. Other providers are liable on a scale of obligations according to their size or nature:

For the remaining platforms, the Act comes into force by 17 February 2024. By this time, EU member states must have designated a Digital Services Coordinator.

Some question whether the new legislation will reduce the prevalence of harmful content online and ask how, or how well, the DSA will be enforced.

The most recent International IP Index report from the US Chamber of Commerce suggests that the DSA will not improve consumers’ or brands’ recourse against illegal content. The report argues that the DSA does not go far enough to fundamentally change how IP is enforced online. The report warns that “The sprawling nature of the legislation and the inclusion of such a high number of exceptions, carveouts, categorizations, definitions, and determinations to be made on a case-by-case basis will almost guarantee that once operational, the law will have a whole host of unintended consequences both in Europe and beyond.” It questions whether the ‘trusted flagger’ system will lead to non-trusted flaggers being deprioritised, and queries how the DSA will interact with other national or EU-wide legislation. All of these points, the report says, are inadequately clarified by the DSA.

As with any new legislation there are bound to be teething troubles, but closer monitoring of, and increased obligations on, online providers is a step in the right direction. With the implementation of INFORM and the DSA across two of the world’s largest online communities, it is hoped that the worldwide online space will gradually become a safer place for consumers and brands.

Further information, and the Act itself, can be found here.

If you have any questions or would like to discuss how your business can tackle counterfeits or unauthorised use of your brands, our trade mark attorneys can help. Get in touch here or email hello@two-ip.com

Madrid Protocol Concerning the International Registration of Marks – Changes to Regulations

On 1st February 2023, changes came into effect which will impact how some trade mark applications are treated under the Madrid Protocol. A summary of these changes is provided below:

Only one representation of the mark

In cases where colour is a distinctive feature of the mark, rather than having to provide two representations (one in colour, one in black and white), only the colour representation is now required.

Claim of colour as a distinctive feature of the mark

Applicants are now able to claim colour as a distinctive feature of the mark when the basic mark is protected or meant to be protected in colour, even when a corresponding colour claim does not appear in the basic mark and the representation of the basic mark is not in colour; in such cases, the colour claim of the basic mark must be certified by the office of origin. 

Representation of non-traditional marks

Sound, motion or multimedia marks are now able to be represented separately, such as by submission in a single digital file, rather than being required to fit within the box provided on the WIPO application form. This does depend on the designated Member State of the Madrid Protocol and its national laws allowing the submission of sound, motion or multimedia marks.

Representation of a cited mark in a notification of provisional refusal

When a mark is provisionally refused due to a citation, there is no longer a requirement for the national office to provide a representation of the earlier mark. They can instead indicate how to access the mark in question, for example, by providing a link to the relevant online database or publication accessible to the public.

Electronic communication only

Although the majority of communication with WIPO has recently been done electronically, the changes mean that all communication must now be via the Contact Madrid online platform or the e-Madrid online service. It is necessary to ensure, without delay, that holders and representatives have provided their email address to WIPO.

Expert advice is recommended to navigate these and other trade mark issues, with Two IP’s Chartered trade mark attorneys on hand to help. Get in touch here or email hello@two-ip.com

Two IP Founder wins ‘Lawyer Monthly’ 2022 Patents Lawyer of the Year Award

Dr Anna Molony has recently been awarded ‘2022 Patents Lawyer of the Year’ by ‘Lawyer Monthly’ for her work in co-founding Two IP and pioneering a new type of firm for the IP profession.

 
The Lawyer monthly awards recognise the achievements of both law firms and individuals who have delivered exceptional results over the last 12 months.
Anna was awarded the accolade in recognition of the innovation and passion she has shown for providing an alternative career option for experienced attorneys who want to be able to focus on doing the work they love, in a way that allows them the time to truly understand what their clients need, while enjoying real work-life balance.

 
She was driven to set up Two IP based on her experience of creating a working life which allowed her to continue building her career whilst enjoying more free time. She has previously built two successful IP firms and so understands what it takes to build a business and is uniquely positioned to use that learning to benefit others. She also recognized that having a good work/life balance was an unusual position to be in, but it didn’t have to be. Two IP has been built to make this lifestyle a very real option for others in the profession.

 
From doing her PhD research to founding and growing two successful IP firms, Anna has always been a keen innovator. She believes in thinking differently and is driven to use what she has learned as an attorney, and in business, to create a better way of working for patent and trade mark attorneys.


Two IP is the first patent and trade mark firm in the UK operating this new model, though a similar model has been being successfully used for a number of UK solicitors firms. It was the success of these new breed consultancy model solicitors firms that inspired Anna to work out how to adapt and develop that model so that it could work for patent and trade mark attorneys.


In addition to Two IP providing all the infrastructure and support services that an attorney needs to do their client work, Anna prides herself on providing business and mentoring support to the attorneys who choose to join Two IP. It has been this mentoring element of the firm’s offer that has been considered so valuable for individuals looking to make a change in their professional and personal life:

“I knew I wanted to change my working life to allow me to pursue interests outside of work but without compromising on my career success. Anna’s experience and genuine desire to support and help her colleagues in the profession was a key driver for my choosing to join Two IP”

Rachel Havard, Two IP consultant trade mark attorney.

Anna is a successful patent attorney in her own right with technical specialisms including telecommunications systems, optical technologies, RFID and software. Working with UK and EU in-house patent departments and technology companies to help them protect and effectively commercialise their innovations and R&D investment. She continues to work for a select group of clients along side building and growing Two IP. 

In line with the Two IP ethos she also has a thriving life outside of work. She is the Senior Independent Director of Bowls England (the national governing body for lawn bowls) and a keen lawn bowls player, including playing for the Warwickshire county team.

Thinking Differently – How Two IP helps me do my best work for my clients

In November, Rachel Havard joined Two IP as a consultant trade mark attorney. In this blog, she shares her reflections after her first three months with us and what it has meant in terms of her ability to serve her clients better.

I have now completed my first quarter with Two IP and am invigorated by working as a consultant trade mark attorney with the support of the Two IP team around me – the ultimate ‘Going it Alone’ but without actually being alone. Two IP gives me all the same infrastructure and organisation as your traditional IP firm, but with fewer constraints.

I have been able to work with my favourite types of client with much more time to get to know them better, and can see how increased freedom and flexibility has benefited both my clients and me personally – and will continue to do so. My family are already thanking me for being present again, and I am sufficiently present at last to hear them!

I have said goodbye to long commutes to the office, and in place of that, I am getting out on the road to visit clients, as well as attending a variety of networking events. I also have much more time for professional development and to remain up to date with evolving case law and industry trends. I have been meeting fascinating new people and have the privilege of continuing to work with many old friends.

“In the process of taking on client trade mark portfolios I already know well, and in many cases helped to build from the inception of a client’s business, I am finding myself in a unique position to give them fresh, forward-thinking insights with the benefit of long corporate memory. There is also the thrill of meeting and working with new clients.”

Rachel Havard, Two IP consultant trade mark attorney.

I have been delighted to see other IP attorneys recognize the same great opportunity I did, and deciding to join Two IP. Such a collaborative environment can be created without hierarchy or being answerable to targets in the traditional sense. Self-discipline is just as important, but Two IP affords me much more control over a working day.

For anyone thinking differently about how their patent or trade mark attorney should work with them, I recommend you take a closer look at Two IP and the fresh approach on offer.  

Protecting your brand from the increase in counterfeits

The global counterfeit goods industry is estimated to be worth around US$600 billion a year. It is thought that as many as 10% of all branded goods sold may be counterfeit, with 80% of us having (knowingly or not) handled fake goods.

Counterfeits remain prevalent in bricks-and-mortar stores, but online sales make up an increasingly large proportion of the total figure, with the COVID pandemic and the shift to online retail providing the perfect environment for counterfeiters to thrive. Numbers of illicit goods have been on the increase for decades, with the development of digital technologies, evolution of freight systems and globalised banking systems all playing their part. The ongoing cost of living crisis affecting many areas of the world was reported in World Trademark Review (WTR) earlier this month as being a considerable concern. The crisis means consumers are looking for more affordable goods, with some purchasing fake products. An increased number of people are also likely to turn to selling illicit goods to make a living.

Counterfeiters operate in all markets, from consumer goods to pharmaceuticals and industrial components. Protecting your brand against offline and online fakes is a huge challenge, but not doing so can negatively and immeasurably impact your brand and your business. Almost 40% of fake goods detained at EU borders have been found to be dangerous to consumers. Harmful or poor-quality goods sold bearing your brand stand to damage the reputation you have worked hard to build, but sales of any unauthorised goods will divert sales from your business, leading to a reduction in profits.

As well as the effect on your business, lost sales due to counterfeiting means billions in lost taxes, and vast numbers of job losses. Counterfeit goods are also linked with organised crime, with the purchase of counterfeit goods funding crimes such as money laundering and illicit drug distribution.

Advanced monitoring and enforcement methods are in place across some of the larger online platforms including Amazon and Alibaba, and there is much discussion over the use of NFTs as authentication tools for products, but those measures are not appropriate or affordable for all. However, there are several steps you can take to protect your business and brands against counterfeit goods.

Needs vary according to industry and sector, but we can tailor a strategy for your business to focus on the most pressing issues. Here are some of the most accessible measures we can help with:

Monitor and authenticate

A range of monitoring and authentication options are available from specialist companies enabling you to monitor sales or listings, and allowing consumers to authenticate products once they are purchased.

Register brands with rights owners’ programmes

Two of the major programmes are Amazon’s Brand Registry and Ebay’s Verified Rights Owner (VeRO) programme. Platforms will usually suspend listings whilst the suspected counterfeits are investigated.

Check consumers’ comments and reviews for reports of fake products

This can be a quick and easy way of flagging suspected counterfeit goods. Consumers often leave negative feedback if they believe they have received a counterfeit product.

Make test purchases and send ‘cease and desist’ letters

If products look suspicious, they can be purchased, tested and if found to be counterfeit used in further action against the counterfeiter. Letters before action can stop counterfeiters quickly, particularly smaller sellers. They can also be used to extract key supply chain information to enable further investigation. Private investigators can be used to make discreet purchases or approaches to counterfeiters.

File Applications for Action (AFAs) with customs authorities

This can be done in many countries and is the most effective way to support local customs authorities to seize suspect goods as they enter the country.   

Civil or criminal proceedings

If your trade marks or images of your products are used by counterfeiters, consider civil court proceedings which offer remedies such as injunctions, damages, an account of profits and delivery-up and destruction of infringing products. Criminal proceedings are also available. We work with various organisations including the UK National Crime Agency (NCA) and the Police Intellectual Property Crime Unit (PIPCU), particularly in cases involving a threat to consumer health and safety.

Trading Standards

Reports can be lodged at your local Trading Standards office. These authorities have the power to seize and investigate reports of counterfeit or infringing goods.  

Educate consumers

Consumer awareness can be crucial to minimising counterfeits. If consumers can readily detect a fake product or know how to report or verify one, this can be a first line of defence. It also protects them from potentially harmful products. Don’t be concerned about acknowledging that there are illicit goods out there; the world is aware that they exist and most consumers would rather buy authentic goods. Owning the narrative around counterfeits, with guidelines on your website, will be beneficial to your business and to consumers.

 

If you have any questions or require advice about tackling counterfeits or unauthorised use of your brands, our trade mark attorneys can help. Get in touch with the Two IP team: hello@two-ip.com.

Patent grants up 10% at IP5 offices in 2021

Patent activity is continuing to increase at the leading IP offices around the world, including the European Patent Office (EPO). How can you ensure that your patent attorney is still doing their best work?

Late last year we reported how both the UK IPO Innovation and Growth Report, and the World Intellectual Property Office (WIPO) Global Innovation Index reflected increased levels of innovation across world economies. This trend is reaffirmed by the recently published IP5 Statistics Report 2021, from the IP5 group of patent offices (EPO, Japan Patent Office, Korean Patent Office, China Patent Office and US Patent and Trade Mark Office). The full report is available from the IP5 website, and also from the EPO.

The report is significant in that it provides a consolidated view of patenting activity across the five largest IP offices. In 2021, 1.5 million patents were granted, an increase of 10% on the previous year. 2.9 Million patent applications were filed- with both the European Patents Office and the Chinese Patent Office leading the way with 5% and 6% growth respectively. It is evident from global filing analytics that Europe represents a key market for patent owners, some 31% of granted patents are in Europe:

As patent attorneys, this is no surprise – the challenge continues to be how to balance the increased levels of work with ensuring that clients receive the highest quality service. That is one of the challenges that we here at Two IP have addressed. By removing the traditional management responsibilities and billing targets, we give our attorneys all the time and space they need to do their best work, for a select group of clients, while ensuring that clients get excellent value for money and our attorneys are fairly rewarded for their expertise and hard work.

If this sounds like the client/attorney relationship you would value, then you can discuss your requirements with our expert patent and trade mark attorneys at hello@two-ip.com

The importance of a valid UK address for service for trade marks and designs

The UK Intellectual Property Office (UK IPO) has issued a new Tribunal Practice Notice (TPN 2/2023) with a potentially significant impact upon UK rights acquired through the Madrid Protocol (for trade marks) or Hague Agreement (for designs).

TPN 2/2023 has the good intention of looking out for rights holders based outside the UK, who might have their rights challenged by third parties but do not promptly become aware of that because they have no valid UK address for service recorded for their UK designations in International registrations. However, as explained below, the same TPN brings about an even shorter period for reaction than previously, if rights holders are to be able to defend their UK rights in the face of such a challenge.

A “valid UK address for service” is one in the UK, Gibraltar, or the Channel Islands. Previously, for challenges to registered/protected UK designations in International registrations without a valid UK address for service, the UK IPO would issue documents to the non-UK address for the holder and would deem such action to constitute “effective service” for the setting of an inextensible period to file a defence (with this period being two months to submit a defence in response to a challenge upon a trade mark designation).

The MARCO POLO case

TPN 2/2023 has been issued by the UK IPO as a result of the decision of Geoffrey Hobbs KC, sitting as the Appointed Person in Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22) – the MARCO POLO case.

The MARCO POLO trade mark was protected in the UK as a designation in an International registration secured through the Madrid Protocol. A declaration of invalidity of that UK designation initially succeeded because the trade mark holder did not file a timely defence. The trade mark holder did not have any UK address for service recorded, so the invalidity application was communicated by post from the UK IPO to the trade mark holder’s registered office in Australia. The Australian address was that of the holder’s accountants and due to COVID restrictions and work from home requirements, the holder did not become aware of the challenge on its UK designation in time to submit a defence. Absent a timely defence, the UK IPO declared the UK designation invalid and directed that it be removed from the Register of Trade Marks and deemed never to have been made.

The holder appealed to the Appointed Person, who found that posting of documents to a non-UK address, as had been the UK IPO’s previous practice, had not constituted valid service of those documents upon the trade mark holder. This has led to the change of UK IPO practice described below.

The new UK IPO practice – TPN 2/2023

TPN 2/2023 sets out the changes of practice in the Registrar’s service of documents in inter partes trade mark invalidation, revocation, rectification and opposition proceedings, and registered design invalidation proceedings. It is most relevant to UK designations in International registrations, but does not impact ex parte proceedings, such as new UK designations under examination, where a UK address for service will not be required unless a notice of provisional refusal is issued to which the holder wishes to respond.

There are two new approaches, dependent on the type of proceeding before the UK IPO:

(1) Invalidation, revocation on the grounds of non-use, revocation on grounds other than non-use, and rectification

Absent a valid UK address for service, a preliminary letter will be issued by the UK IPO in the above types of proceeding, requiring the holder to provide a valid UK address for service within one month, together with confirmation that it intends to defend its right. Said letter will be posted by Royal Mail Signed-For service, using whichever non-UK contact details are available to the UK IPO at that time. This could be to the holder themselves but, if a non-UK representative address is given, the UK IPO will use those representative details in preference to the holder’s address.

If the holder provides a valid UK address for service within the set period, the action will be served to the address of the (newly recorded) valid UK address for service, then the usual period for defence, e.g. of two-months to defend a trade mark right, will run from the date of effective service to the UK address. If the holder does indicate a wish to defend the right within the initial one month set but does not provide a UK address for service in that time, they will be given one month to record a UK address for service.

If no valid UK address for service is provided within one month and no indication of a wish to defend, then the UK IPO will issue a letter confirming their intent to treat the right as undefended and to invalidate or revoke it. Again, this letter would be sent to the non-UK address, with a fourteen-day period for reply. Failure to respond would result in the UK IPO issuing a short decision on the undefended application and could lead to invalidation or revocation.

(2) Trade Mark oppositions against published International Registrations (UK)

In oppositions to UK designations in International trade mark registrations, a notice of provisional refusal will be sent by the UK IPO to the World Intellectual Property Organisation (WIPO), who will in turn notify the holder. The transmission to WIPO is deemed effective service of the opposition and would not at that stage require the holder to appoint a UK address for service. Additionally, the UK IPO will issue a letter to the holder using any non-UK address for service details provided by WIPO: this will require a defence within an already activated two-month period and will also confirm that a valid UK address for service will be required to contest the opposition and engage beyond submission of an initial defence. If a defence is filed, but with no valid UK address for service, the UK IPO will then require appointment of such an address for services within one month.

NOTE – for UK trade marks or registered designs cloned from an EU right at the end of the Brexit transition period:

If the target of challenge is a comparable trade mark or design created out of an EU right which was in force at the end of the Brexit transition period, and if proceedings are launched prior to 1 January 2024, the above new practice will not apply, and service will be effected via any EU address for service provided in the data imported from the original EU right.

Comment and recommendations

This new practice, though well-intentioned, sets an even shorter period than previously for the holder of a UK designation to react, should a challenge be made to their registration, and if they do not have a valid UK address for service. Although preference would be given by the UK IPO to sending initial notification of the challenge to a representative recorded at WIPO, rather than to the holder themselves, a single month is a very short period for that notification to reach a representative outside the UK and be acted upon, with them to quickly arrange appropriate UK representation.

Risks posed by the TPN could be easily mitigated, and future requirements promptly satisfied, by appointing a valid UK address for service as early as possible, rather than waiting for any challenge to be encountered where vital deadlines might be missed.

Wherever questions are raised relating to validity of a right in the UK, local advice and representation is crucial, and Two IP’s Chartered UK trade mark attorneys are well qualified to help you. Get in touch here or email hello@two-ip.com.

Information on the unitary patent and the benefits for UK businesses.

The European Patent system is about to undergo a significant change, introducing the “Unitary Patent” and a new “Unified Patents Court”. 

This short video provides more information on the unitary patent and how it will provide time and cost benefits to UK businesses. 

A Unitary Patent is a European patent with unitary effect in a sub-set of the current European Patent Convention member states. A Unitary Patent provides uniform protection and equal effect in all the UP states. It may only be limited, transferred or revoked, or lapse, in respect of all the UP states. It may be licensed in respect of the whole or part of the territories of the UP states. 

There are 17 EPC member states which are participating in the UP: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. 

The UK is not participating in the UP, so the classic European patent validation process will still be followed for the UK. 

The advantages of the UP include removal of national validation procedures and reduction of costs at EP grant, and reduced renewal fees (the UP has a single annual renewal fee for the 17 UP states – the UP renewal fee is equivalent to the total of the renewal fees in the four most popular UP states). 

A potential disadvantage of the UP is that any patent litigation for infringement or validity of a UP will be handled centrally by a new Unified Patents Court (UPC), which has exclusive jurisdiction over UPs 

The Unitary Patent (UP) is expected to come into operation on 1st June 2023.