In 2021 the UK IPO launched its five-year 'Transformation Programme' to modernise and aggregate its services for different categories of intellectual property.

The findings of the 2^nd Consultation regarding the Programme were published last Thursday (10 April 2025); the responses relate to proposed changes in the following areas:

• online public document inspection service for trade marks and designs;
• rules governing public inspection of trade mark and design documents and requests for confidentiality;
• series trade mark service;
• length of supplementary protection certificate (SPC) fee payment periods;
• collection and publication of addresses for patent inventors; and
• ways to encourage more mediation during IPO tribunal proceedings.

Online trade mark and design documents

The Programme aims to create an online service where trade mark and design documents will be published and available for inspection online, much like the UK IPO's existing service for inspecting patents.

This is a significant update from the current system where trade mark and design documents have to be requested directly from the IPO.

The response from the consultation was favourable, though the IPO notes the concerns regarding confidentiality and potential data scraping by third parties.

Series mark service discontinued

The series mark service (in place currently) allows for a single trade mark application to contain up to six variations of a mark.

In order to qualify, the marks in question must resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.

However, about 40% of series mark applications do not meet these requirements. The IPO intends to discontinue the system for series marks, and requested responses on its user experience.

The majority of the responses favoured the system. Respondents found the service practically very useful, given its low cost and administrative benefits, but some were confused about whether a series mark provides any actual or perceived additional protection compared to a standalone trade mark. Many respondents said that six is a good maximum number for a series.

There was general opposition to the removal of the series service altogether, because applying for standalone marks would come at an increased cost (both in terms of application fees and enforcement costs), and might create difficulties for existing, valid series marks.

Despite this feedback, the UK IPO intends to remove the series mark service: it estimates that a small proportion of applicants would need to make additional applications, and most customers would benefit from the simplification.

It would also put an end to the high volume of invalid series applications. The IPO says the costs of applying are “already low”, in response to criticism of its fees.

Mediation

The IPO believes that there is an imbalance between the high number of IPO Tribunal proceedings and the relatively low number of parties using its commercial mediation service.

It seeks to encourage mediation by introducing Mediation Information and Assessment Meetings (MIAMs) into the IPO Tribunal process, in which parties would be briefed on the benefits of ADR and can see if their case is suitable to be mediated.

The IPO says it will introduce a Pilot MIAMs scheme for proceedings where there are private individuals on both sides.

Responses were broadly in favour of MIAMs taking place during proceedings, particularly for unrepresented parties, but warned that they would not like being “forced” to mediate.

What's next for the programme?

The IPO intends to launch its updated digital patent service later in 2025, followed by its online trade mark and design service in 2026.

Report by Gavin Stenton, Chair of the MARQUES International Trade Mark Law and Practice Team. The Team will continue to monitor this topic and report on any further developments.

The 2025 Kay Uwe Jonas Memorial Lecture was delivered by Lydia Gobena, of Fross Zelnick Lehrman & Zissu, PC, during the MARQUES Team Meetings in Barcelona in March.

The topic of Lydia’s lecture was “The Case for Creativity”. In the talk, she described “how participating in creative endeavours outside of your practice can benefit you professionally and personally”.

Lydia (a member of the MARQUES Famous and Well-Known Marks Team) drew on her own experience of jewellery making, from her first weekend class at a prestigious fashion school in 2001 and making jewellery for friends and family to launching a small business and exhibiting in galleries and exhibitions.

She also illustrated her talk by wearing items of jewellery she had made, including rings and a necklace.

“It has been more than two decades since I first stepped in to the jewellery marking studio and it has been one of the most educational and satisfying adventures I have undertaken. As I explored my creativity, I learned several valuable lessons,” she said.

These lessons include: a greater appreciation for clients’ needs, the need for flexibility and taking a business perspective; developing foresight, problem-solving and imagination; managing anxiety; coping with disappointment; finding a safe space to make mistakes; being authentic and being comfortable with who you are; and seizing the moment.

“Some of the most interesting and beautiful things that you can create will be a product of your mistakes,” said Lydia. “Sometimes, I may even rejoice in those mistakes when they turn out differently than what I had imagined. Thus, instead of dwelling on them or amplifying them, I try to figure out how to avoid them next time - or, better yet, glean something positive from an otherwise negative situation.”

Lydia dedicated the speech to the memory of Kay Uwe Jonas, Cory Joshua Germaine Alleyne and her mother Abebetch Gobena. She concluded: “Live your life fully, imaginatively and without regret and, in the process, you might learn some things and end up finding joy.”

The full text of Lydia’s speech is available to read on the MARQUES website here.

WIPO is hosting a conference to mark the 25^th anniversary of the Uniform Domain Name Dispute Resolution Policy (UDRP).It will take place in Geneva, Switzerland on 23 April this year with online attendance also possible.

According to WIPO: “The conference will include a retrospective on the UDRP, taking stock of jurisprudential trends and looking ahead to the planned review of the UDRP by ICANN. Sessions will also look at ADR systems for blockchain domains, the upcoming introduction of new gTLDs, and DNS industry and enforcement forecasts including the potential impacts of AI.”

The conference will include opening remarks by WIPO Director General Daren Tang and Assistant Director General, IP and Innovation Ecosystems Sector, Marco Alemán followed by sessions on: the UDRP in numbers; UDRP retrospective (a global blueprint); WIPO’s ccTLD program; UDRP review expert group report; WIPO Overview 3.1; WIPO’s e-filing system and case platform; ICANN’s new gTLD program; applying the UDRP model to Web3/Blockchain domains/Alt Roots; and the future of DNS enforcement: AI tools/state of play.

There will also be time set aside for open discussion.

The conference is open to the public including brand owners, trade mark practitioners, counsel, registrars, ccTLD administrators, academics and other domain name and Internet stakeholders. 

It is being held in a hybrid format. On-site attendance includes lunch and a cocktail reception.

For more information on the program and speakers, visit WIPO’s website here.

To register to attend online, click here.

To join the waiting list for on-site attendance, email arbiter.meetings@wipo.int.

EUIPO has published details of its approach to artificial intelligence, including information on its current use of AI tools.

The information is available on the EUIPO website here. There is also a video by EUIPO available on YouTube.

The information on the website sets out EUIPO's responsible approach to AI, which is bult on five pillars: AI as a strategic enabler; adopting AI in a structured way; applying AI in a practical way; cooperating and sharing knowledge on AI; and introducing AI with a human-centric approach.

EUIPO says it uses AI "to empower staff, helping them achieve greater productivity, accuracy, and efficiency" and builds AI systems that are "transparent, unbiased, and secure, with strong safeguards to protect privacy and data".

It adds: "Our commitment to AI governance focuses on ensuring that all AI solutions are developed with ethics, user trust, and positive impact at their core. By harnessing AI's potential, we aim to drive meaningful change across the EU, enhancing both our services and the experiences of those we serve."

AI tools are currently used at various stages of the trade mark lifecycle (see chart below), including in tools such as TMview, DesignView, eSearch plus and eTranslation for eSearch Case Law.

Illustration from EUIPO website used with permission

A section on Brazil has been added to the chart on self-regulatory organisations (SROs) for advertising and unfair competition matters.

The chart is compiled by the MARQUES Unfair Competition Team and can be downloaded on the Team’s page on the MARQUES website (MARQUES log-in required).

Team Co-Vice-Chair Felipe Dannemann Lundgren of Dannemann Siemsen in Rio de Janeiro has completed the questionnaire for Brazil. The project is led by Philippe Probst of Fuhrer Marbach & Partners in Switzerland.

The chart now covers Brazil, Finland, France, Germany, Italy, Portugal, Sweden, Switzerland, Turkey and the USA.

The purpose of the questionnaire is to provide corporate lawyers, attorneys and others with a practical and user-friendly overview of SROs for advertising and unfair competition matters operating in various jurisdictions with general powers over the full spectrum (or a broad range) of industries.

Some jurisdictions may have separate SROs and/or separate rules and procedures with respect to different types of matters.

The questionnaire is intended to cover advertising and unfair competition matters, not consumer protection matters (redress for defective products and services, price regulations, consumer credit law, etc).

Industry-specific SROs are also not covered by the questionnaire (e.g. tobacco, alcohol, medical and health, or food industry SROs) except to the extent that these are of significant importance and handle advertising and/or unfair competition matters.

The five questions for each jurisdiction encompass: existence and identity of self-regulatory organisations; matters handled; rules, eligible parties and fees; procedure; and penalties and enforceability.

Further jurisdictions will be added soon. If you have any questions, please contact a member of the Unfair Competition Team.

The Working Group on the Legal Development of the Madrid System is conducting a survey of users. The survey is aimed at both trade mark owners and representatives, and WIPO welcomes responses from both groups.

The survey focuses on three issues:

• Bad faith: Understanding the prevalence of bad faith filings within the Madrid System
• Central attack: Assessing the use of central attack in relation to international trade mark registrations.
• Basic mark ceasing of effect: Gathering data on the grounds for cancellation of international trade mark registrations due to the ceasing of effect of the basic mark.

Feedback from users will inform discussions at the next session of the Working Group in September 2025.

Responses are anonymous and the survey takes about 10 to 15 minutes.

The survey is available on WIPO’s website here. The deadline is 30 April 2025.

WIPO is also conducting a survey of IP offices of Madrid System members.

The MARQUES International Trade Mark Law and Practice Team encourages all users to complete the survey. MARQUES takes part in the Working Group discussions and is preparing a formal submission for the meeting in September.

The Team is also leading a workshop at the MARQUES Annual Conference in The Hague in September, which will focus on Canadian and US developments.

Registration is now open for the next MARQUES webinar, which takes place on Wednesday 4 June at 14.00-15.00 Europe time.

The webinar is hosted by the MARQUES Cyberspace Team and is titled: “Evolving Challenges and Infringements on Social Media”.

It will address the latest social media developments, including the emergence of new players and business models, and their impact on IP rights.

The webinar will feature industry experts who will share their experiences on tackling IP challenges on social media – including positive outcomes and common problems. The speakers are:

• Luca Barbero, Barbero & Associates Ltd, UK
• Linnea Harnesk, Autoliv AB, Sweden
• Kate Coffey, Zurich Insurance Company Ltd Switzerland
• Daniel Greenberg, Lexsynergy Limited, UK

The speakers will share tips and tools for monitoring IP infringements, securing takedowns and preventing IP abuse – and provide invaluable insights into the not-so-social aspects of social media.

This webinar is recommended for all in-house counsel and external advisers who deal with IP enforcement online. The fee is €75 (MARQUES members) or €125 (non-members).

To find out more and secure your place, visit the dedicated page on the MARQUES website.