Trade Mark Law & Practice at a Glance – May 2025

UKIPO update

Series marks to be abolished

As a result of the second transformation consultation by the UKIPO, it was decided that series marks would be abolished. In its press release, it was explained that this decision was made in an effort to simplify trade mark applications. Moreover, the UKIPO believed that series marks do not offer value for money given that the additional protection offered by series marks is minimal compared to its cost.

This does not affect existing series marks and will only be applied to future applications.

Update on UKIPO hearing and decisions timeframes

The UKIPO has been experiencing delays in relation to hearings and has recently published a guidance on the timelines which can be found here. Currently, it is taking around 19 months from the filing of the claim (TM7) to the issuance of a decision from the papers, and 30 months if there is a hearing. The estimates do not include cooling-off periods or any other additional time incurred during the proceedings. It is also currently taking 11 months to schedule a hearing from the date of hearing request and 10 months from the date of evidence stage completion letter or date of hearing for the delivery of a decision.

The UKIPO has also indicated that it intends to reduce the time it takes for a decision to six months by July 2027 and to three months by March 2028.

UKIPO SME IP support scheme update

The UKIPO launched its pilot IP support scheme last year and has revamped it for 2025/26, concentrating on the IP Audit support programme, rather than the tiered IP Advance scheme from last year.

The IP Audit scheme will provide eligible SMEs with partial funding of £2,250 (including VAT) towards an intellectual property audit conducted by a qualified IP professional. It is also worth noting that participating businesses must contribute £750 (including VAT) towards the total cost and the process must be initiated through one of the UKIPO’s regional partners, not through the UKIPO itself. There are a few conditions attached to this scheme, and each application will be assessed for eligibility.  To be eligible for the IP Audit scheme, SMEs must:

• Be engaged in a business support programme with one of the regional partners.
• Demonstrate potential to benefit from specialist IP management support.

You can find out more about this, including contact details, here.

UK+ regime on the exhaustion of IP rights maintained

The UKIPO has announced that the UK will maintain its current UK+ regime on the exhaustion of IP rights. This means that products protected by an IP right sold in the UK or European Economic Area (EEA) can continue to be resold in the UK without needing permission from the IP owner. This decision will ensure consumers can continue to have access to many types of products. You can read more about it in the UKIPO press release.

Trademark Expressive emails

It has been reported that owners of UK trade marks have been receiving emails from Trademark Expressive, purporting to be IP attorneys or solicitors and stating that the trade mark owner does not own a registration.

Since the issue has been reported, the trademarkexpressive.com website is no longer in operation. Further information from the Solicitors Regulation Authority can be found here. This serves as a helpful reminder to be vigilant in reviewing unsolicited correspondence and to report anything from unrecognised individuals or companies to your legal advisor, or the UKIPO.

EUIPO update

Fraudulent emails

The EUIPO has issued a warning about fraudulent emails that appear to be signed by the EUIPO Director of Finance (Nour-Eddine H.) soliciting payment of registration fees in bitcoin. You can read more about this warning here, including an example of the fraudulent email, and information on how to report scam emails. The EUIPO also publishes all misleading invoices that it is aware of here.

Changes to European designs

On 1 May 2025, the EUIPO implemented its first phase of changes to the European designs regime. This project is aimed at modernising the protection of designs in light of evolving technologies such as 3D printing. Amongst the notable changes, are the introduction of a “repair clause” and the broadened legal definition of “design” and “product” to explicitly include non-physical items and animations. Our colleagues have written a detailed summary of the changes, and recorded an associated webinar.

Worldwide update

China: Stricter requirements for non-use cancellation actions

The China National Intellectual Property Administration (CNIPA) has imposed stricter requirements on non-use cancellation requests such as on the qualification requirements of the cancellation applicant and the preliminary evidence that should be submitted by the cancellation applicant. This is with the aim of reducing the number of illegitimate cancellation applications.

If the CNIPA deems that the requirements are not met, an office action may be issued or the cancellation application may be rejected. In particular, it is worth noting that where a cancellation applicant attempts to conceal their identity, or files repeated requests to disrupt the trade mark owner’s business operations, the applicant may face financial penalties.

Canada: Changes to trade mark procedures

Canada’s Trademarks Act and Trademarks Regulations came into force on 1 April 2025 and implemented some key changes. Notably, the Trademarks Opposition Board now has the authority to award costs against a party whose conduct has caused undue delay/expense and issue confidentiality orders. Another notable change is the requirement to show use or excusable non-use in Federal Court enforcement proceedings commencing within three years of trade mark registration. Moreover, leave from the Federal Court must now be granted to file additional evidence on appeal from the Trademarks Opposition Board.

United States: Suspension of expedited examination of design applications

The suspension took effect on 17 April 2025 and is intended to help the US Patent and Trademark Office (USPTO) combat fraudulent applications and reduce its backlog of applications pending examination. You can read more about it here.