Bulletin - IP Updates

Weekly Trademark Update – Nov 2021 (1 of 3)

JURISDICTION: Finland, Portugal
CHANGE: Equinox IP Services – New Official Fee Jurisdictions Available – Finland and Portugal

Hi all!

We have now included all official fees for Finland and Portugal as part of our IP Services offering.  If you would be interested in having these official fees imported into your system as part of our Equinox Official Fee Management Service, please send an email across to ip-services@workanyware.co.uk and we will be in touch!

Our current monitored jurisdictions are the United Kingdom, European Union, EPO, WIPO, Benelux, the Netherlands, Belgium, Germany, Australia, New Zealand, Canada, Ireland, Israel, Luxembourg, Finland, Portugal and the United States of America.

All of our monitored official fees can be viewed under the ‘Official Fees’ tab of the IP Portal!


JURISDICTION: United Kingdom
CHANGE: IPO’s first AI-powered tool improves quality of TM applications

“IPO is receiving higher quality trade mark applications following the launch of a new service powered by AI.

In the year since the IPO’s trade mark pre-apply service was launched, the average number of trade mark applications rejected due to unsuitable Nice classification terms has dropped by 14%.

Pre-apply is the IPO’s first service powered by AI. The AI tool identifies similar trade marks that already exist, and presents these to the customer, which helps improve the chances of successfully registering a trade mark. Additionally, by helping customers identify the right groups of goods and services for their proposed trade mark, using the pre-apply service means applications are more likely to be accepted.

The IPO has seen a 70% drop in the length of goods and services lists since the service was launched. This means customers will have more suitable trade marks that are more likely to only protect the right goods and services, leaving them less open to challenge. It could also save applicants money, because there is a fee payable for each additional category of goods and services that is selected.

The service has introduced an improved customer interface and Nice classification picker, shorter and more relevant lists of goods and services, and has removed the option for customers to select all classifications listed on the page.

These improvements mean:

Examining trade marks is quicker – examiners no longer need to trawl through long lists of goods and services and it’s easier to search and compare.

Better quality applications – applications are less likely to be rejected due to unsuitable Nice classification terms, saving customers time and money

The service is proving popular and has been used over 15,000 times in the last 3 months alone. This equates to around two thirds of all applications submitted by customers who don’t have an attorney.

The service:

uses AI to perform relative and some absolute grounds checks

provides guidance on choosing the right classifications of goods and services

introduced an improved classification picker containing a pre-approved list of terms

gives an estimate of application costs

The IPO has actively sought feedback from customers, and this suggests the office’s first use of AI within its services is delivering what was hoped for.

One customer said:

As a first timer applying for a trade mark, I found this tool very beneficial. It helped me understand my chances of being rejected, and also what grounds a rejection can be given on.

The IPO’s application guidance video helps explain what classes of goods and services are, which ones they should select and why they are important. It has been well received, generating 12,295 views in the last 90 days.

Future AI powered services

The IPO is planning to make further use of the opportunities brought by AI, and build this technology into future services, as part of the One IPO Transformation Programme.

Potential opportunities making further use of AI could include:

improved automated text searches using Natural Language Processing

automated help and guidance, such as pre-apply services across all rights, and chatbots that could, for example, suggest classifications of goods and services

advanced validation and authentication features across customer accounts and application processes to help improve the quality of applications we receive

David Holdsworth, Deputy CEO and Director of Operations, gave his view on what this means for IPO’s future services:

It’s great to see the positive impact our first AI powered tool is making. More importantly, it’s a statement of intent for our future digital services. Through our One IPO Transformation Programme, we’re looking to bring the same innovative thinking to all of our customer interactions. We want to bring our digital services up to a level of quality that matches our reputation for world leading customer service.

The tool has been designed around customer feedback. To help the IPO build services around the needs of those using them, the IPO is calling for more customers to take part in its transformation user research and help make its One IPO transformation programme a success.

To take part in the research, or find more about how your input can help shape the future of the IPO’s services, simply drop an email to usertesting@ipo.gov.uk.

Notes to Editors:

1) The Nice Classification (NCL), established by the Nice Agreement 1957, is an international classification of goods and services applied for the registration of marks.” (Source: WIPO)

2) When we examine a trade mark’s suitability we consider:

Relative grounds: the trade mark is already in use or similar to one that is already in use; Absolute grounds: the trade mark is unsuitable because of its intrinsic qualities (eg it isn’t distinctive, or uses prohibited names or symbols)

3) To access the tool, go to the first page of the trade mark application form, select the first option ‘trade mark owner or the authorised person within their business’ and click ‘continue’.

4) More information about the One IPO Transformation Programme is available.

5) Artificial intelligence?(AI)?is a transformative technology and is already revolutionising many areas of our lives. It?can be a powerful tool for scientists, entrepreneurs, and artists, enabling new inventions and creations.? The Government wants the UK to be at the forefront of this revolution, to encourage innovation in AI technology and promote its use for the public good.

6) In October 2021, the IPO launched a consultation on how the copyright and patent system should deal with?Artificial Intelligence (AI). This consultation?is seeking?evidence and views on the extent to which patents and copyright should protect inventions and creative works made by AI, and measures to make it easier to use copyright protected material in AI development, supporting innovation and research.”


CHANGE: EUIPO guidelines available in 23 official languages

“The EUIPO Guidelines are now available in 23 official languages of the EU. They were adopted by the Executive Director on 8 February 2021 in Decision No EX-21-1, and have been in force since 1 March 2021.

The Guidelines were previously available in the five working languages of the EUIPO (English, French, German, Italian and Spanish). The following languages have now been added: Bulgarian, Croatian, Czech, Danish, Dutch, Estonian, Finnish, Greek, Hungarian, Latvian, Lithuanian, Maltese, Polish, Portuguese, Romanian, Slovak, Slovene and Swedish.

About the Guidelines

The EUIPO’s current trade mark and design practice is reflected in a series of Guidelines for Examination that are intended to help both our users and our staff in charge of the various procedures.

Read the guidelines.


CHANGE: China goes paperless for certificates of trade mark registration from 2022

“The CNIPA recently announced that paper trade mark registration certificates will no longer be issued from 1 January 2022. This move will both reduce the carbon footprint and speed up its trade mark registration process. For trade mark applications submitted via paper filing, the CNIPA will issue a notice with a URL and QR code where the applicant can download the electronic trade mark registration certificate. For the application filed via the e-filing system, the registration certificate can be viewed and downloaded from the CNIPA’s online service system. There will be a transitional period from 15 October to 31 December where the CNIPA will issue both paper certificate and Notice of receipt for trade mark registration certificates. Read CNIPA announcement in Chinese


JURISDICTION: United Kingdom
CHANGE: Changes affecting a small number of trade mark tribunal proceedings

“Changes are being made to address an issue which affects a very small number of trade mark tribunal proceedings.


Trade mark owners can challenge a later filed trade mark that they think conflicts with their existing trade mark.

Before the end of the Brexit Transition Period, this challenge (by way of opposition or invalidation proceedings) could be based on an existing EU trade mark. When this happened, it was possible to counter challenge the EU mark by questioning its validity at the European Union Intellectual Property Office (EUIPO). This counter challenge could be based on the existence of an earlier UK trade mark.

Since the end of the Transition Period, existing EU trade marks may still be relied upon in certain pre-transition period proceedings in the UK. However, the EUIPO has now prevented counter challenges if they are based on earlier UK trade mark rights. In very rare cases, this means that an EU trade mark could be used to successfully oppose or invalidate a later UK trade mark in a potentially unfair way (because the EU mark may not itself have been valid).

The changes

To address this, a new route to counter challenge will be available at the IPO. This will ensure that applicants (and owners) of UK trade marks are able to counter challenge an earlier trade mark which is being used against them, by tying the enforceability of the EU mark to the outcome of any challenge (or registration process) to a comparable or re-filed mark deriving from the EU mark.

The change can only apply to IPO tribunal proceedings, based on an EU trade mark, that are

oppositions and invalidations which were ongoing at the end of the transition period (on 31 December 2020), and are not yet concluded, or

oppositions started after the end of the transition period, but only those made against trade mark applications filed before the end of the transition period, and not yet concluded

We expect the number of cases affected by this change to be low.

Action to take

The new route to counter challenge will be available in December 2021. In the meantime, affected parties may request a stay of any relevant tribunal proceedings. Detailed guidance will be made available through a tribunal practice notice at least three weeks before the changes apply.”


CHANGE: APIs are coming!

“The EUIPO intends to publish its first beta version of the EUTM Filing API by Q1 2022. Customers will then be able to get familiar with the interface and start exploring its options.

Over the last few months the EUIPO has been working on the application programming interfaces (API) initiative, which will allow customers to integrate their IT systems with the EUIPO.

Seven IP companies registered their interest to participate in a pilot project, following the July call for interest.

Several successful workshops followed, in which companies were guided through the journey of developing and testing APIs with the objective of obtaining beta API interactions with Office systems. The most recent workshop, held on 13 October, focused on how to improve future APIs.

Stay tuned for more information on how the API initiative is progressing!”


JURISDICTION: United Arab Emirates
CHANGE: Declaration made under Article 8(7)(a) of the Madrid Protocol: United Arab Emirates

“The Government of the United Arab Emirates deposited with WIPO the declaration indicating that the United Arab Emirates wish to receive an individual fee when they are designated in an international application, in a designation subsequent to an international registration and in respect of the renewal of an international registration in which the United Arab Emirates have been designated (Article 8(7)(a) of the Madrid Protocol).  Those amounts will be:

  • 1,630 Swiss francs for each class of goods or services, when designating the United Arab Emirates in an international application or subsequently;
  • 1,630 Swiss francs for each class of goods or services, when renewing an international registration in which the United Arab Emirates have been designated.

This declaration shall have effect on December 28, 2021.

For further information, please refer to Information Notice No. 18/2021

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