The UK Intellectual Property Office (IPO) will soon be implementing six key changes to trade mark, designs and tribunal services following a public consultation in 2023. One of the key changes is in respect of series trade marks and the other is in respect of mediation meetings. This insight explains what the changes are and how they will affect your organisation.
What is the IPO?
The IPO is the official UK government body responsible for intellectual property rights, including trade marks, designs and patents. You can use their website to search for registered trade marks and trade mark applications.
What were the main outcomes of the consultation?
The development of the new trade marks, designs and tribunal services is expected to begin in the autumn and the main outcomes of the consultation, which are the focus of this insight, are:
- Simplifying trade mark applications by discontinuing the series marks service for new applicants in the future.
- Trialling mediation meetings for disputes at the IPO Tribunal, in cases where neither party has legal representation.
What is a series trade mark?
A series of trade marks consists of up to six marks in a single application which should look the same, sound the same and mean the same. Any differences between the marks must be minor.
Why register colour/minor variations?
Registering colour variations or marks with small variations is often overlooked and not protecting them can lead to problems further down the line. You are only protected with exactly what is registered at the IPO.
The implication of a third party copycat/competitor using a similar logo in a colour you are using but have not registered could be dire for your business. Enforcing a registered trade mark is easier and more cost effective than relying on your unregistered rights under a passing off claim.
Why are series trade marks being scrapped?
Around 40% of series applications do not meet the IPOs criteria and in the consultation in 2023 users reported that they found series marks confusing. For context, there were only 44 responses to the consultation (with some providing qualitative evidence and others simply stating that they did or did not support a proposal).
65% of series marks are filed by applicants who don’t have a representative which is the likely reason for the high rejection of applications.
How will this affect me?
Registration will become more expensive when you are registering your branding with small variations. At present, for a trade mark series application with more than two marks (for example, your logo in three different colours), you pay an additional fee of £50 to register the trade mark as a series. This saves you from making two separate applications.
The changes mean you will lose out on the cost benefit currently on offer of registering a series trade mark. Instead of filing one application for the variations, you will have to file different applications for each variation, incurring more IPO fees (and professional fees if you use a lawyer).
The best way to receive strong trade mark protection is to apply for your trade marks before you start trading or launching a new product/service and to have a diverse range of word marks and logo marks. Whilst trade marks are a low cost investment for 10 year protection, the upfront cost of registering a trade mark before your organisation has commenced trading may seem like an unnecessary cost or a cost that can wait until a later stage. If trade mark registration is not actioned at the outset, however, it is often forgotten about, and you may find that another business has secured the name or a similar logo when you get around to preparing an application. The removal of series trade marks could lead brand owners to register less trade marks and having a weaker portfolio. This could mean the only recourse against infringers would be to rely upon the law of passing off which is more complex and costly than registered trade mark infringement.
Series applications – the headline advice
If you have overlooked trade mark registration or you need to review your trade mark portfolio you should do it without delay! The key message is to get your series applications filed and to seek expert legal advice.
How can Tozers help me with trade mark registration?
Tozers' specialist intellectual property lawyers have experience in successfully registering trade mark series applications. We offer competitive fixed fees and assist clients across a broad range of industries including technology, medical, education, fashion, creative arts, charities, councils, social enterprises and holiday parks.
Thoughtful registration of intellectual property lies at the heart of many an organisation's success and we can advise about how to maximise the protection available to you. Even if trade mark registration has been completely overlooked, there are different ways forward. We can provide specialist advice to get the application right and avoid conflicts, saving you time and funds.
Alternative dispute resolution
The IPO will be trialling mediation meetings for disputes at the IPO Tribunal, in cases where neither party has legal representation.
The majority of trade mark disputes end in a settlement or compromise rather than being decided by the IPO Tribunal. Settlement can be achieved by simple negotiation, as a result of mediation, or some other form of alternative dispute resolution.
In the context of a dispute about a trade mark, a settlement comes about when the parties manage to reach a mutually acceptable compromise on that dispute. Such a settlement is no less binding and final than if the parties had asked the Tribunal to determine the dispute for them (unless the settlement has been poorly drafted without the benefit of legal advice, for example).
Mediation meetings in IP disputes
Mediation meetings are not new. Before they were made mandatory in the Small Claims Court for disputes under £10,000 the parties were asked whether they were agreeable to a free mediation call. An independent third party mediator would go between the virtual call ‘rooms’ and try to bring the claim to an end by agreeing on a compromise.
A key point is that we can advise you with a dispute in the background without formally going on the IPO Tribunal record as your advisers. We commonly act for parties off the record where there may be a tactical benefit to not disclosing that they have legal representation. The same logic can be applied to these upcoming changes; if you find yourself in the unfortunate circumstance of bringing or defending an IP dispute in the IPO Tribunal where the other party is a litigant in person, receiving advice in the background to help you in a mediation meeting could be the difference between a settlement which protects your organisation and a settlement which seriously restricts you/leaves your organisation vulnerable.
Mediation meetings – the headline advice
Three key points:
- Whilst incurring advice in the background comes at a cost (and you would be unlikely to recuperate that cost from the other party in a mediated settlement), specialist legal advice will help you frame your position and approach settlement discussions in the strongest way.
- A settlement gives the parties certainty and closure and avoids the anxiety of having to wait for a judgment from the Tribunal and the uncertainty about that outcome. The Court is plagued with delays and it can easily take two years from the date of issue to get to a final hearing.
- Reaching a settlement avoids the expense of continuing with the litigation. Even if you were to win in court and be awarded your legal costs, you would rarely get all your costs back from the other party.
How can Tozers help me with trade mark disputes?
We can provide expert legal advice which can lead to more productive negotiations and resolutions. We are experts in dispute resolution and, wherever possible, the focus will be on settling the claim most cost-effectively and often without recourse to proceedings.
Tozers’ expert IP lawyers
As a top firm for client satisfaction, we have built a reputation as good listeners who can help break down complex legal jargon into words you can understand and are experts at advising on your organisation’s situation.
Whether you require advice with the registration of your IP or the bringing/defending of a claim you can speak with an expert lawyer today.
