Following a consultation carried out in 2023 as part of the UK Intellectual Property Office's digital transformation programme, the Government has now responded, confirming the actions it plans to take to improve its service to its users. One of the most significant changes for IP owners is the discontinuation of the series trade mark service. This change will take effect when the UKIPO's new digital trade mark service is launched (development is expected to begin in Autumn 2025) but it will only apply to new applications, with no impact on existing series trade marks.
Discontinuation of series trade marks
Under the current framework, trade mark applicants can file a single application containing up to six trade marks which differ only in non-distinctive matter (for example, the same logo in different colours). Series marks may be useful, for example, where an applicant is not yet sure which variant of a mark (e.g. which colour of the logo mentioned above) they want to use. The Government has, however, expressed its concern that series marks are not well understood (they often lead to objections and unnecessary expense being incurred) and that the service is potentially misused to achieve multiple examinations at a reduced cost.
Despite respondents generally favouring a reduction in the number of marks which could be protected in a series over discontinuation of the series mark service as a whole, the Government has concluded that this would not sufficiently address the problems it has identified. It points to its analysis of the position in France, where series marks are not offered, to underscore its expectation that, once the service is removed, there will be relatively few additional applications for non-distinct variants of marks in the future.
The Government will monitor trade mark applications to assess the impact of discontinuation of the service.
Other areas covered in the consultation
Online public document inspection service for trade marks and designs: The Government plans to introduce a new online file inspection service for trade marks and designs to facilitate easier and quicker access to trade mark and design documents (a service already exists for patents). Currently, it is necessary to request copies of such documents from the UKIPO or to view them in person. The Government noted concerns around confidentiality, data scraping and AI tools; it will take these into account when designing and implementing the new service.
Rules governing public inspection and confidentiality requests: The current design rules include a 14-day period after filing, during which design documents do not become available (patent and trade mark applications are generally open to public inspection on filing). This time delay will be removed. The Government will also allow confidentiality requests to be made at any time (for trade marks, designs and patents).
Supplementary Protection Certificate (SPC) fee payment periods: The Government will extend SPC fee payment periods from three to six months, aligning with other IP rights.
Reduction in collection and publication of addresses for inventors: The patents register currently includes full addresses for inventors. The Government will explore options to limit the publication of inventors' full addresses, to provide more privacy, while ensuring necessary contact information is recorded.
Encouraging mediation in IPO tribunal proceedings: Respondents were in favour of Mediation Information and Assessment Meetings (MIAMs) at the UKIPO but were wary of imposing compulsory mediation (as now applies in the courts in appropriate cases, following recent developments). With over 7,000 proceedings currently ongoing at the UKIPO Tribunal, the Government clearly expects some of them to be suitable for mediation. It therefore plans to introduce a MIAMs pilot in Summer 2025, in cases where both sides are unrepresented, to encourage cost effective dispute resolution. The existing UKIPO mediation service has had limited uptake, so it will be interesting to see whether engagement levels improve.