Annual Technical Report on Trademark Information Activities in 2022 submitted by United Kingdom
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 trade mark examiner search platform was updated with the launch of Ascepto 11, which brings significant changes to the functionality of the previous version.
Trade Mark and Designs examination have introduced a new quality assessment process to review a proportion of cases in real time.
The office has moved all calls we receive from skype to Microsoft Teams telephony system.
New projects launched or resumed this year in the context of the policies and plans mentioned above, short description: aims, partners, tasks
The transformation project is ongoing building our One IPO Foundation, the office has started to build our single, integrated system, for all registered IP rights (patents, trade marks and designs). Trade Marks will start their discovery phase in October 2023. This may result in a different search platform to the current Acsepto 11 being adopted.
Following a quality review by an external contractor, risk based Real Time Sampling has been integrated with existing Quality Management Processes bringing the existing sampling for performance management earlier in the examination process. By looking at the highest risk cases, we are most likely to identify learning points and correct them before they reach our customers.
Main areas of trademark information activities and related information and communication technology (ICT) practices which were in the focus of attention last year
Improvements to the eTM3 Apply for a Trade Mark service to improve the customer journey and to provide best practice guidance around submissions of Series Mark applications.
Introduction of a new and improved Cookies preference management tool on the eTM3 Apply for a Trade Mark service, a widget for managing cookies preferences to make it easier to opt in/out of different required/optional cookies.
A new solution was introduced to improve the timeliness and quality around the processing of quasi-paper filings (e.g. forms such as the MM2 which are received as PDFs by email). This solution provided a direct integration with the mailbox to ensure email attachments are correctly captured, a user-interface for capturing and validating case numbers, and integration with the internal systems used by Trade Mark examiners.
Statistics: changes in terms of application filings and registrations with respect to previous year; trends or areas experiencing rapid changes
Domestic Filings- Financial Year
2017/18 78215
2018/19 87157 (increase of 11.4%)
2019/20 89904 (increase of 3.2%)
2020/21 140959 (increase of 56.8%)
2021/22 152273 (increase of 8.0%)
2022/23 to date (31/03/23) 109564 (decrease of 21.7%)
International Registrations- Financial Year
2017/18 9617
2018/19 13294 (increase of 38.2%)
2019/20 17025 (increase of 28.1%)
2020/21 20313 (increase of 19.3%)
2021/22 34996 (increase of 72.3%)
2022/23 to date (31/03/23) 31734 (decrease of -1.7%)
International Applications -Financial Year
2017 2618
2018 2842 (increase of 8.6%)
2019 2978 (increase of 4.8%)
2020 3551 (increase of 17.5%)
2021 4418 (increase of 24.4%)
2022 4043 (no increase 0.0%)
Other matters and useful links (URLs): annual report of the Office, news page, statistics, etc.
Statistics related to Trademarks 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/facts-and-figures-patents-trade-marks-designs-and-hearings-2021
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, keyword, phrase or image at: https://www.gov.uk/search-for-trademark
Matters concerning classifying
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
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.
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: This is only available in digital form.: 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: This is only available in digital form.
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 research trade mark applications on the Internet. They also liaise with Patent Examiners if the trade mark is of a technical nature. International examiners utilise the Madrid Protocol and the regulations via the WIPO website. In addition, examiners utilise DARTS IP, which is a comprehensive database of caselaw and other IP related information.
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. We have successfully upgraded from Acsepto version 9 to Acsepto version 11 in September 2022.
Hardware used to support 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 or one 32 inch monitor.
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.
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.
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 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. Information regarding trade mark procedures can be found via our website www.ipo.gov.uk.
Cooperation with universities, technology and innovation support centers, 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
The outreach team organises Intellectual Property masterclasses to connect with the commercial sector. The demand for classes is increasing again following the pandemic. Interactive courses are offered digitally online, in the Newport office or directly to stakeholders on-site. The Trade Mark section of the course focuses on the application process and explains how having a distinctive brand registration can benefit businesses.
Trade Mark examination offers support for the IPREG accredited courses for a trade mark qualification.
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 https://www.tes.com/partners/cracking-ideas 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 phrase 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.
Trade Marks took part in a series of regional “Roadshows” organised by CITMA providing relevant information to their members.
Representatives from Trade Marks went to the INTA conference in Washington DC, including speaking at panels and discussions with INTA committees.
Examiner Technical Leads in Trade Marks provided formalities training to the Caribbean offices.
Assistance to developing countries
Nothing to report.
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.