Weekly Trademark Update – Sept 2021 (2 of 3)

“The IPO is extending the temporary service to process high volume requests to update the representative address for newly created comparable trade marks and re-registered designs. It will be available until 31 December 2021.

Why we are offering this service

• at the end of the transition period, newly created comparable trade marks and re-registered designs featured the representative name and address recorded at the EUIPO. This means many of them have an EEA-based representative address
• owners and their representatives do not need to do anything as existing EEA addresses can remain for 3 years

Options to change address for service

• if you wish to act early to change representative details for comparable trade marks and re-registered designs to a UK address for service, you have a number of options as outlined in the following paragraphs. Depending on your circumstances you may use a combination of options

Option 1: Global Update

This option is suitable where a representative is changing all the designs and/or trade marks they already represent at a single EEA address to a single UK address:

• we require a single form TM33 for trade marks or a single form DF1A for designs, including a signature to authorise the change
• the form must state “all marks” or “all designs”. We do not require a list of the cases to be updated
• email the completed form directly to: bulkafs@ipo.gov.uk
• include the words ‘Global Update’ in the email subject line
• every case under the existing Representative ID will be updated to the UK address

Option 2: Bulk Representative Update (temporary service)

This option can be used to update at least 50 cases where you wish to apply a single UK address for service for: Some, or all, of the comparable trade marks or re-registered designs that currently have another representative’s EEA address for service.

or

some, but not all, of the comparable trade marks or re-registered designs that you currently represent at an EEA address.

• if you haven’t already done so, register your interest by emailing bulkafs@ipo.gov.uk, providing: the name of your business; the name, email address and telephone number for a contact person in your business; and an estimate of the number of rights you seek to update
• we will provide by email a spreadsheet template for you to complete
• complete the spreadsheet template with details of at least 50 rights and submit this by email with a completed single TM33 or DF1A form to bulkafs@ipo.gov.uk
• all cases on a single spreadsheet must be moving from one single representative ID to another. You must provide the current EUIPO representative ID
• we accept multiple owners on one request, but require separate spreadsheets for trade marks and designs.
• for fewer than 50 updates use option 3

Option 3: Standard Filing of DF1A]/TM33

Use this option to change the representative address for multiple comparable trade marks and re-registered designs when neither of the above options are suitable.

• email your TM33 or DF1A with a list of cases to be updated to forms@ipo.gov.uk
• this can include International marks or designs

Enquiries

If you have any questions regarding this notice, please email bulkafs@ipo.gov.uk.”

“Vision is to provide ‘world’s best IP environment’; aims to have ‘fast, flexible and high-quality’ services. Catherine White of Intellectual Property Magazine, reports from CIPA Congress 2021.

Over the next four to five years, the UK Intellectual Property Office (UK IPO) is looking to improve public access to a delivery of its IP services for everyone, with a “vision is to provide the world’s best IP environment”, said the office’s director of transformation Andy Bartlett.

Speaking on the second day of the Charted Institute of Patent Attorneys virtual congress 2021, Bartlett stated that it is the office’s aim to deliver “fast, flexible, high-quality services” as well as “removing barriers to innovation and making the IP system much more accessible and useful to people”.

Bartlett, who has worked in the UK IPO for over 30 years, explained that the office wants to ensure that it does everything it can to “harness the power of IP, to incentivise investment, safeguarding assets, and enable knowledge sharing.

“We think through the improved use of IP, we will enable the UK to forge an unbeatable competitive advantage, building foundations for sustainable economic growth. And that is what government is really concerned with.”

Turning to the office’s transformation programme over the next five years, Bartlett laid out its vision and objectives.

He explained, “We’re not looking just to digitise current processes, our system or services, we’re looking to completely transform what we do, the way we do it, and the value that we add as an organisation to Britain’s economy. So we definitely want to transform our services, our data, and empower our people.”

Bartlett commented, “We want our services to be fast, flexible, high-quality, using a seamless experience across all our different rights. And they’ll be accessed by authenticating customer accounts, this is a new thing for UK IPO… we want our services to be much more adaptable, so that we can respond much more quickly to future needs.

“We’re also looking to reduce bureaucracy, increasing efficiency for customers and our ourselves and doing things like ironing out anomalies between our different services in particular across patents, trademarks and designs, when there’s not a good reason for there to be differences. We’re also really keen to deliver the best tools for our staff. We always say that our staff and their knowledge and expertise is one of our biggest assets that we have. And we need to make sure that they’ve got the right tools available to them, to help them to deliver to our customers.”

He noted that the UK IPO wants to improve the way it delivers its service to customers, such as delivering a single integrated system for all IP rights.

“Customer facing services should be much more joined up so people who need to do transactions with us across all of our rights, patents, trademarks and designs will be able to do so by a single system… a single online UK IPO account… [and we will make] as many of those services as self-service as we can.

“So you don’t have to wait for us to process a transaction unless necessary. And we want all our services to be available digitally. We want to offer paper routes to the customers that need that, but we want everything to be available digitally, making everything quicker and faster for us to be able to deliver.”

Bartlett explained that because the scheme is a “complex transformation and a different way of working”, it will take a number of years to come into fruition.

“We need to migrate all that information and those rights across from our existing systems across onto the new world. The idea is then that once we deploy patents, we will then deploy trademarks and then subsequently designs onto those systems.

“[It will] include doing things like deploying AI and other new technologies for new ways of working to put that all in place going forward, and that becomes the norm for the UK IPO. So, it will take us four to five years to complete that journey in its entirety, it is not as quick as we would like but it does recognise the complexities and that we want to make sure that we get this right.””

“Our One IPO Transformation project launched in April 2021. Here are the updates for our transformation activity since then.

We shared the first details of our One IPO Transformation Programme in April. Since then we’ve made good progress and are on track with our plans. From September we will be ramping up the pace further.

But first, if you’re new to our transformation plans, or need a reminder, the video below will bring you up to speed. You can also read our One IPO Transformation prospectus.

One IPO Transformation

Manage IP project commenced

We started work on the first of our transformation projects – Manage IP – in March. This is a single service where customers will be able to view and manage all their intellectual property (IP) in one place. They will also be able to change or update their personal information. As part of Manage IP we’re building the customer account, which is the gateway to the new services.

The ‘discovery’ phase

We started the Manage IP project off with the discovery phase where we interviewed different types of customers. This enabled us to understand what our customers need from the Manage IP service so we build the right thing. It also helped us to map out how our future process could work and create early blueprints for the new service. The discovery phase of this project is now complete.

Acting on the feedback: what did we learn?

Here are the important findings our customers told us in the ‘discovery’ phase:

• different customers want to access IPO’s services in different ways. Some attorneys want to manage their IP through the IP software they already use. Others need to be able to delegate access to clients or colleagues and filter through large IP portfolios. Then there are the one-time IP filers who want it to be simple, quick and easy
• in the customer accounts, simple changes, like changing your address, should happen automatically without further checks. More complex changes, such as changing ownership of an IP right, should still need manual checks or approvals
• we need to find a simple way for customers to link their existing IP to their new IPO account. This is a process we have called ‘claim my right’. People don’t want to enter lots of information about their rights when they register, so we’re thinking about how this could work

What’s next for Manage IP?

We are stepping our transformation programme up a gear. For Manage IP we’re moving to the ‘Alpha’ phase, where we’ll start building and testing the parts of the service that are most challenging. We will:

• build prototypes to test and trial features of the new service. For example, we’ll build an end-to-end customer transaction, like changing an address. We’ll also test the customer account to work out what information different customers need to see. Finally we’ll look at how the process of giving access to others (eg a paralegal or a client) could work
• begin to test ideas for how we’ll marry up customer accounts with the IP they own. We don’t currently have all the data we need to automate this fully. We’re looking how we can do this without placing too much of a burden on customers
• explore how we can use Application Programming Interfaces (APIs). These would allow customers to send data to IPO via their own IP management software

The start of the Secure IP project

In September we also started our second transformation project – Secure IP. Secure IP is where customers can do everything involved in securing their IP rights. This includes applying for it, examination and registration or granting of IP rights.

As with the Manage IP project, we will be starting this with a discovery phase. This will allow us to understand what customers need from this part of the service.

Next steps: we need your help

To ensure our new services meet your needs, we need people to help us with our user research and testing. You can sign up to take part by emailing usertesting@ipo.gov.uk.

Keeping you updated

We expect to provide our next update around the turn of the year. By then, we should have some early prototypes of the Manage IP Service ready for testing. We look forward to moving up a gear and making quick progress over the next few months.

If you would like to receive regular updates on IPO’s Transformation project, please contact transformation@ipo.gov.uk.”

“To implement provisions of the Trademark Modernization Act of 2020, in May 2021, the U.S. Patent and Trademark Office (USPTO or Office) issued a Notice of Proposed Rulemaking (NPRM) proposing changes to the Trademark Rules of Practice (TMRP). The public comment period expired on July 19, 2021.

Notable among the proposed changes are (in Section VI) a new procedure for attorney recognition in TMRP 2.17 and 2.18 (to align the rules with current practice) and clarification of the grounds for permissive versus mandatory withdrawal of representation in TMRP 2.19 (to align the rules with the USPTO Rules of Professional Conduct).

Under the current rules, attorney recognition automatically terminates when ownership changes, when the application process terminates, or, in the case of an issued registration, when it is canceled or expires or upon acceptance or rejection of a filing made under Section 7, 8, 9, 12(c), 15, or 71 of the Lanham Act.

Under the proposed rules, unless the owner proactively revokes the appointment or when the attorney proactively withdraws from representation, recognition would continue when an application abandons, when post-registration documents are filed and accepted, or when a registration expires or is canceled.

Among the reasons offered by the USPTO for the proposed rule changes, the Office seeks to resolve an inconsistency between the current application of Section 2.17(g) governing attorney recognition and the terms of Section 2.18(a), which require the USPTO (with a few exceptions) to correspond with the applicant’s or registrant’s attorney if one is recognized, and otherwise to send correspondence to the applicant, registrant, or party to the proceeding. The USPTO currently treats representation as continuing in certain circumstances after attorney recognition has been terminated under the terms of Section 2.17(g). Examples include when the USPTO sends to the attorney of record a notice of abandonment, the trademark registration certificate, or renewal reminders.

By extending attorney recognition until the proactive revocation or withdrawal, the USPTO could continue to send such correspondence to the attorney of record. The USPTO also considers the rule changes as necessary to facilitate implementation of a new “role-based access control system” to enhance database security, the details of which were not discussed in the NPRM.

The USPTO proposes changes to Section 2.19 to clarify attorney obligations when withdrawing from representation, and to differentiate the grounds under which the attorney may request to withdraw versus those situations where an attorney must request withdrawal, consistent with the USPTO Rules of Professional Conduct. Accordingly, the proposed revisions specifically reference Section 11.116(a) (mandatory withdrawal) and Section 11.116(b) (permissive withdrawal) to ensure alignment of provisions. A new provision, Section 2.19(d), clarifies that withdrawal is not required in circumstances where the attorney is “mistakenly, falsely, or fraudulently designated” as a representative without the attorney’s prior authorization or knowledge.

Editor’s Note

INTA submitted comments to the USPTO on July 19, 2021, expressing concern regarding some of the rule changes. Until details of the future role-based access system are released, INTA considers some of the rule changes to be premature. Moreover, INTA suggested that current practices for communication are desirable. INTA recommended specific changes to the existing rules to reflect the Office’s current practices for attorney recognition and correspondence.”

“The Industrial Property Office of the Business Development Agency of the Principality of Monaco (MCIPO) has published a practice paper on the examination of absolute grounds for refusal for figurative trade marks with purely descriptive words/expressions.

The MCIPO is at the forefront of non-European IP offices in finding common ground with the criteria listed under the Common Communication on the Common Practice of Distinctiveness (CP3) – Figurative Marks containing descriptive / non-distinctive words. The publication of this practice paper is a result of joint collaboration between the MCIPO and the EUIPO, within the framework of the EUIPO’s international cooperation activities.

The practice paper provides a clear and comprehensive explanation of the principles on which the practice is based, which will be implemented by the MCIPO and the IP offices of the European Union Intellectual Property Network (EUIPN).

The publication of this practice paper seeks to increase transparency, legal certainty, and predictability for the benefit of users and examiners of IP offices. It also aims to become a reference for all interested parties and it will ultimately cover a majority of cases.

The practice paper has been made publicly available in French and English – both versions of which can be found below. The practice paper is divided into two parts: the first part summarises the criteria, while the second part provides a complete explanation of the different criteria applicable in each case.

“