UK government launches new IP consultation
Series marks, mediation, and online documents included in proposals | Consultation marks second phase of One IPO Transformation Programme to enhance IP office’s digital services.
The UK government has launched a new consultation on proposed changes to allow the Intellectual Property Office (IPO) to deliver better digital services.
Part of One IPO Transformation, a five-year programme that commenced in September 2021, the office’s latest consultation addresses issues concerning trademarks, designs, patents, and tribunals.
Series marks
The consultation suggests removing or changing series marks.
These marks allow applicants to secure up to six similar trademarks at a reduced cost, such as having the same logo in varying colours.
Series marks constitute roughly 10% of all domestic trade mark applications, according to the IPO.
However, concerns have arisen due to a high objection rate for incorrect usage—standing at 39% for unrepresented customers and 17% for those with representation.
The IPO outlined that these statistics indicated that many customers struggle with the intricacies of filing series marks.
The actual value and legal safeguard these marks offer to trademark holders is unclear, said the IPO.
Sunny Kumar, partner at Ashurst, said series marks have high objection rates which suggests that customers may have difficulties filing them.
“The government's comments that the additional value or legal protection series marks add is unclear are opinions shared by many trademark practitioners,” he said.
Mediation within tribunals
The consultation delves into the possibility of improving mediation within the IPO tribunal service.
The launch of a new digital service for hearings and tribunals in 2025 is anticipated to play an important role in encouraging this mediation, said the IPO.
The IPO has advocated for mediation as a swifter and more cost-effective alternative to traditional litigation and is interested in listening to stakeholders’ input.
Kumar also said “A renewed push towards mediation and away from lengthy litigation is promising,”
“Changes to the processes that enable mediation to be used could be that more mediators with expertise are appointed, resulting in settlements being reached more expeditiously and overall lowering the costs of a dispute.”
Online document inspection service
Attempting to enhance accessibility to essential IP-related information, the government is proposing the introduction of a digital service.
Such proposals have been “long-awaited” according to Kumar.
This service would enable the public to view documents linked to trademark and design applications online—a marked departure from the outdated requirement for physical presence at the IPO's offices or ordering paper copies for document inspection.
By removing these obstacles, the proposed digital service aims to provide the public with easy access to valuable information about IP.
“Better access to IP information will be instrumental in ensuring there is a greater understanding amongst members of the public, the result of which is like to be fewer disputes over ownership” said Kumar.
SPCs, confidentiality
An additional area of focus in the consultation relates to blending trademarks and designs legislation with existing patent legislation concerning the confidentiality of information and public inspection of documents.
The government is also considering changing the publishing of inventor’s addresses for UK patents as an attempt to strike a balance between privacy and transparency.
Under the proposed change, full addresses may no longer be disclosed; instead, only the country and place of residence would be made public. The applicant's full address and the designated address for service would still be publicly available.
Finally, the consultation delves into the payment structure for Supplementary Protection Certificates (SPCs), exploring the possibility of extending the period during which SPC fees must be remitted.
One IPO Transformation Programme
The government concluded its first transformation consultation in July.
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 trademarks, designs and tribunal services. We are excited to work with customers to shape the new services.”
CIPA welcomed the One IPO Transformation project.
Matt Dixon, vice president of CIPA commented: “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.”
Rachel Wilkinson-Duffy, president of CITMA and partner at Baker McKenzie, highlighted the project is “complex and ambitious” and would “revolutionise how IP rights are filed and managed.”
“Following the previous consultation on transformation, the UK IPO has taken on board feedback from the IP profession, including CITMA, resulting in a number of improvements,” she added.
Individuals can respond to the consultation or access more information via the government's consultation webpage.
Additionally, the IPO will begin research to understand what tribunal, trademark and designs customers need from the digital services and customers can be a part of this research.
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