Annual Technical Report on Trademark Information Activities in 2020 submitted by GB/IPO
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I. GENERAL OVERVIEW OF RECENT DEVELOPMENTS IN TRADEMARK INFORMATION ACTIVITIES CARRIED OUT BY THE OFFICE
Outline of main policies and plans aimed at development of trademark information activities and expected time frames for their realization
The Office completed work that was required as part of the end of the EU Exit transition period. This work was completed 31st December 2020 / 1st January 2021 and saw the Office introduce comparable rights of EU and International Trade Marks into the Office’s internal systems.
As part of this work, a new online Trade Mark Classification search service was introduced.
AI pre-apply and/or examiner assist?
The Office introduced AI tools to assist customers when applying for a Trade Mark as well as assisting examiners during the examination process. The pre-apply tool is available on the UK IPO website and allows customers to carry out checks on the mark they wish to apply for before formally applying. The examiner assist tool is being piloted across the examination teams and is designed to assist examiners with their image searches.
New projects launched or resumed this year in the context of the policies and plans mentioned above, short description: aims, partners, tasks
The Office made plans to integrate with a solution hosted by DEFRA for the registration of Geographical Indicators.
Main areas of trademark information activities and related information and communication technology (ICT) practices which were in the focus of attention last year
See information above relating to the EU Exit transition period.
Statistics: changes in terms of application filings and registrations with respect to previous year; trends or areas experiencing rapid changes
Domestic Filings
2016 61681
2017 75121 (increase of 22%)
2018 84064 (increase of 11.9%)
2019 90449 (increase of 7.6%)
2020 118791 (increase of 31.3%)
International Registrations
2016 4029
2017 8863 (increase of 120%)
2018 13294 (increase of 38.2%)
2019 1706 (increase of 27%)
2020 18247 (increase of 25%)
International Applications
2016 2215
2017 2618 (increase of 18.2%)
2018 2842 (increase of 8.6%)
2019 2978 (increase of 4.8%)
2020 3551 (increase of 17.5%)
Other matters and useful links (URLs): annual report of the Office, news page, statistics, etc.
Statistics related to trade marks at the Intellectual Property Office can be accessed through the annual reports, annual reviews and facts and figures at: https://www.gov.uk/government/statistics?departments%5B%5D=intellectual-property-office
II. SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE
Information and support provided by the Office to applicants regarding filing on paper and/or e-filing (instructions, seminars, etc.) - URLs
Domestic filings - information regarding filing on paper and/or e-filing can be found at: https://www.gov.uk/how-to-register-a-trade-mark
International filings – information regarding filing an International Application (can only file via paper) can be found at: https://www.gov.uk/government/publications/protecting-your-uk-intellectual-property-abroad/protecting-your-trade-mark-abroad
Availability of the application dossier in electronic form
Trade marks can be searched by application number, owner, key phase or word at: https://www.gov.uk/search-for-trademark
Matters concerning classifying
(i) Classification and reclassification activities; classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification
(ii) Use of electronic classification systems and pre-defined terms of the classification applied
Information regarding classifying can be found at: https://www.gov.uk/guidance/how-to-classify-trade-marks
Matters concerning processing of different types of non-traditional marks (e.g., three-dimensional, motion, hologram, colour mark, etc.)
Information regarding types of marks which can be registered can be found at: https://www.gov.uk/how-to-register-a-trade-mark/what-you-can-and-cant-register
Guidance on different types of non-traditional marks can also be found at: https://www.gov.uk/guidance/trade-marks-manual/the-examination-guide
Other activities
The IPO is an active participant in WIPO’s Standing Committee on the Law of Trade Marks, Industrial Designs & Geographical Indications and meets with other participating offices at WIPO during Madrid Working Group.
The IPO participates in EUIPO Cooperation Projects, Convergence Projects and improving the quality of data in TMview. The IPO is also actively involved in EUIPO liaison meetings on Trade Marks and Classification.
III. SOURCES OF TRADEMARK INFORMATION PROVIDED BY THE OFFICE
Main types of publications in the field of trademark information, outline of the content and medium (on paper, on CDs, online - URLs)
Trade Marks Journal is published every week on a Friday and contains accepted applications for UK Trade Marks and International Trade marks that include the UK: https://www.gov.uk/check-trade-marks-journal
Trade Marks Act 1994 makes up part of the trade mark legislation in the UK: https://www.gov.uk/government/publications/trade-marks-act-1994
Trade Mark Rules: https://www.gov.uk/government/publications/trade-marks-rules
Manual of Trade Mark Practice sets out guidance on the Intellectual Property Office work practices: https://www.gov.uk/government/publications/manual-of-trade-marks-practice
Practice Amendment Notices (PAN) announces changes to our practice, such as how we interpret a provision of the law, or how we handle applications: https://www.gov.uk/government/collections/practice-amendment-notices-pan
Official Gazettes: main types of announcements, frequency of publication, medium (on paper, on CDs, online, URL), etc.
The Trade Marks Journal is published every week on a Friday and contains accepted applications for UK Trade Marks and International Trade Marks that include the UK: https://www.gov.uk/check-trade-marks-journal
Information products (coverage, medium, etc.) available to examiners, including external documentation and databases
Examiners use the Manual of Trade Marks Practice, the Trade Marks Act 1994, Trade Mark Rules, case law and researches trade mark applications on the Internet. They also liaise with Patent Examiners if the trade mark is of a technical nature.
Information products (coverage, medium, etc.) and services available to external users; conditions of access (e.g., free of charge, subscription, etc.)
Our main office is located in Newport, Wales, where the public can file applications and discuss possible IP protection with an IPO Advisor over the phone or in person via appointment. In addition, we also have a front office in London where customers can file any correspondence for the attention of the Office.
Legal status information (kind of information, coverage, medium, etc.)
The legal status is contained on the UK Register and may be searched by application number, owner, key phase or word: https://www.gov.uk/search-for-trademark
Other sources
Nothing to report.
IV. ICT SUPPORT TO SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE
Specific software tools supporting business procedures within the Office: general description, characteristics, advantages, possible improvements
Acsepto – stand-alone search system used by Examiners to search for earlier Trade Marks.
Hardware used to supporting business processes of the Office
Staff access a Windows 10 desktop via Microsoft Surface Pro devices, which are connected to two 24 inch widescreen monitors via a dock.
Internal databases: coverage, updates, interlinks with external sources
UKTM – database used to process domestic applications.
MPS – database used to process International Applications and Registrations.
Establishment and maintenance of electronic search file: file building, updating, storage, documents from other offices included in the search file
New applications and amendments to existing UK Trade Marks are published to our search repository every 10 minutes and are available using our Trade Mark Number and/or Owner electronic search services. New or amended images can take up to 24 hours to appear as they are processed overnight on a daily basis.
The keyword, phrase or image search service utilises information stored in our Acsepto search tool which is updated on a daily basis.
Information relating to International Marks on a weekly basis from data feeds provided by WIPO EU IPO updates stopped at the End of Transition period, 31 December 2020, respectively: https://www.gov.uk/search-for-trademark
Administrative management electronic systems (register, legal status, statistics, and administrative support)
Management information is produced from UKTM and MPS.
Other matters
Nothing to report.
V. PROMOTION ACTIVITIES AIMED TO SUPPORT USERS IN ACCESS AND EFFICIENT USE OF TRADEMARK INFORMATION
Office's library (if deals with trademark information): equipment, collection management, network of libraries in the country, cooperation with foreign libraries
The Patlib Network was founded by the European Patent Office but PATLIB UK is autonomous and driven by its members and the UK Intellectual Property Office (IPO).
PATLIB UK is a network of 16 libraries around the UK that offer help and support on intellectual property as well as other business topics. They are based in local libraries and therefore open to any member of public that wishes to attend.
One of the key offerings of the network is access to support in intellectual property searching. All centres have a minimum requirement to supply assisted searches to businesses, which includes the UK trade mark database, TMview. The centres also assist with classification searching through TMclass. Many take this further however by providing lessons to guide businesses on completing basic initial searches.
Training to deliver these services has been supplied by the IPO through the IP Master Class programme as well as ongoing individual training sessions as needed. In addition to the guided searches some Patlib centres also offer a commercial trade mark searching service. This is at a low cost and is available to anyone; it is regularly used by businesses and individuals as well as IP Professionals.
As the centres are located within local libraries they make the most of free databases such as TMview and TMclass and due to lack of funding do not pay for any additional databases or tools. Our office, through the PATLIB UK Network and the British Library, takes part in numerous exchange programmes with other patent libraries around the world as in previous years.
Publications related to different business procedures and trademark information sources available to users, for example, books, brochures, Internet publications, etc.
Our main office is located in Newport, Wales, where the public can file applications and discuss possible IP protection with an IPO Advisor over the phone or in person via appointment. In addition, we also have a front office in London where customers can file any correspondence for the attention of the Office.
Cooperation with universities, technology and innovation support centres, etc.
Our Business Outreach continues to raise awareness of IP, helping businesses reach an informed decision on how to use, manage, and enforce their IP to its full potential. This is done via a portfolio of business tools including mobile and online resources, seminars, workshops/training and working with partners to deliver broader dissemination and understanding of IP: https://www.gov.uk/government/publications/intellectual-property-for-business
Education and training: training courses, e-learning modules (URLs), seminars, exhibitions, etc.
We continue to communicate IP awareness to young people from primary through to secondary school. We have developed a range of curriculum-linked education resources to raise awareness of innovation, creativity and intellectual property in partnership with UK Music, Aardman Animations and the Industry Trust.
Campaigns are supported through crackingideas.com an online hub to support UK and devolved Governments’ curriculums plus advice and guidance for schools on intellectual property. We have introduced a new online tool for Universities (IP Tutor) helping students and lecturers understand intellectual property rights: https://www.gov.uk/government/publications/ip-in-education/ip-in-education
Other activities
All marketing and PR is carried out within the External Communications team and we are achieving great coverage particularly on our social networking platforms.
VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF TRADEMARK INFORMATION
International exchange of trademark information in machine-readable form (e.g., Official Gazettes)
The Trade Marks Journal is published every week on a Friday and contains accepted applications for UK Trade Marks and International Trade marks that include the UK: https://www.gov.uk/check-trade-marks-journal
Trade marks can be searched by application number, owner, key phase or word at: https://www.gov.uk/search-for-trademark
Participation in international or regional activities and projects related to trademark information
The IPO is an active participant in WIPO’s Standing Committee on the Law of Trade Marks, Industrial Designs & Geographical Indications and meets with other participating offices at WIPO during Madrid Working Group.
The IPO participates in EUIPO Cooperation Projects, Convergence Projects and liaison meetings on Trade Marks and Classification.
Assistance to developing countries
Hosted Examiners from Trinidad & Tobago, Cyprus and Vietnam and gave an overview of UK law and practice.
Other activities
The IPO provide reports to World Trade Organisation on TRIPS Agreement, TRIPS responses details work done with other offices and relate to all areas of IP, reporting on activities around technology transfer and technical cooperation.
VII. OTHER RELATED MATTERS
Nothing to report.