Intellectual Property Office opens consultation on trade marks and digital service

The UK Intellectual Property Office (IPO) has launched a new consultation seeking views on proposed changes to enable it to deliver better digital IP services.

The new consultation is part of a wider IPO Transformation Programme and follows previous consultation carried out from November 2022 to January 2023.

The new consultation launched yesterday (23 August) focuses on specific trade marks and design issues, as well as proposals on patents and tribunals within the new IPO digital tribunal service, due to launch in 2025. It invites responses from designers and design-led businesses and other users of its IP services.

A digital system for all registered IP rights by 2025

By the end of 2025, the IPO is looking to replace its existing processes with a digital system for all registered IP rights, including patents, trade marks and designs.

The outcomes of the first consultation were published on 1 August 2023, and includes responses including the provision of self-service digital accounts to make it easier for customers to view and manage their IP online and the use of digital documents and automation within its service.

The first of the new digital services will be for patents, and will launch in Spring 2024 with the trade marks and design services expected to follow in Autumn 2025.

According to IPO CEO Adam Williams, alongside providing “better digital services”, the transformation programme will also “the legislation, policy and practice that underpins the IP system”.

Trade marks and series marks

The consultation includes proposals to change or abolish series marks, which allow customers to apply for up to six similar trade marks, such as the same logo in different colourways, at a reduced rate.

According to the IPO, series marks represent around 10% of all domestic trade mark applications. At present, series mark applications have high objection rates due to incorrect usage, which the IPO believes shows a lack of understanding around the intended use of series marks.

The IPO says the majority of series marks are applied for by unpresented applicants, and it believes the parameters for the category as well as the additional value and legal protection that these add for trade mark customers is unclear.

The new proposals suggest abolishing series marks entirely or reducing the number of series marks available to two or four, in line with its data that only 5% of applications feature five or more marks, and of these, around half are rejected as not qualifying.

Easier public access to IP documents

With the current system there are a number of barriers for designers and their clients in accessing IP documents, including time-intensive,  and complicated systems.

Currently there is a requirement to attend an IPO office in person or order physical copies of documents to view information relating to trade mark and design applications.

The government is proposing a new digital service that will allow the public to view this information online.

Bringing designs legislation in line with patents

There are also proposals to simplify IP systems and bring trade marks and designs legislation in line with patents legislation.

For patents, documents can be viewed online for free via document inspection service IPSUM, while for trade marks and designs only limited bibliographic information is available digitally.

The IPO notes that the lack of a similar system for trade mark and designs “may not meet customer expectations”.

While the Intellectual Property Act 2014 allows for such an inspection service for designs, the IPO says its “current IT systems do not exploit this opportunity”.

Some aspects or parts of documents are not open for inspection under law and would remain unavailable online.

The IPO asks respondents for views on the proposed inspection service “and any potential unintended consequences”.

Encouraging mediation over litigation in tribunals

Within the IPO tribunal service, the government is looking to encourage the quicker and less costly alternative of mediation rather than litigation.

The IPO is looking to hear views on possible changes that could enable more mediation in hearings and tribunals, which will be integrated into the new digital service.

Considerations include the introduction of mediation information and assessment meetings with trained IPO mediators, free of charge to all parties, as well as increased use of hearing officer powers.

How to respond

The consultation runs until 11:59am on 31 October 2023. For more information and to respond online visit the website or email transformationconsultation@ipo.gov.uk

The IPO will publish a summary on gov.uk after the consultation, which will include a list of names or organisations that responded, but not people’s personal names, addresses or other contact details.

Alongside the consultation, the IPO will be carrying out research to understand what tribunal, trade mark and designs customers need from the digital services. To register to take part in this research, customers are invited to email usertesting@ipo.gov.uk

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