News

20 March 2023 Aaron Newell Appointed WIPO UDRP Panelist Congratulations to Aaron Newell, Partner in the Trade Marks and Designs Group, who has just been appointed by WIPO as a UDRP (Uniform Domain Name Dispute Resolution Policy) Panelist. The UDRP sets out the legal framework for resolution of disputes between parties over abusive registration and use of Internet domain names. Panelists are the adjudicators of the disputes; they assess... Read more

27 January 2023 UK IPO Changes Practice Regarding Address for Service Following ‘MARCO POLO’ Case Summary Owners of certain IP rights in the UK will now be required to record a UK-based address for service at the UKIPO in order to defend a challenge to those rights. The UK IPO has published new guidelines detailing the procedure it will follow when directing owners to record such an address against their rights, and the consequences for... Read more

5 December 2022 European Commission Publish Plans for a Revised European Designs Directive and Regulation EU Designs Directive 98/71/EC and Council Regulation (EC) No 6/2002 have now been in place, largely un-amended, for 20 years.  For the past few years the European Commission have been conducting a review of design law and practice, which has now led to proposals for a revised Designs Directive and Designs Regulation to update the design legal framework in the... Read more

18 March 2022 Russian Government Takes Powers to Appropriate IP Rights Without Compensation Where Proprietors are from “Unfriendly Countries” The government of the Russian Federation has adopted on 7 March 2022 a decree which provides that no compensation is payable when a patent, utility model or industrial design is subjected to a compulsory license, if the proprietor is from a country carrying out “unfriendly activities”. The list of countries deemed to be carrying out “unfriendly” activities in relation to the Russian... Read more

14 February 2022 China Joins the Hague System for International Registration of Industrial Designs On 5 February 2022 China announced it is joining the Hague System for International Registration of Industrial Designs. From 5 May 2022, Applicants will be able to designate China as part of an International Design Application along with other major jurisdictions that include the USA, EU, UK, Japan and Canada. The announcement also states that the Chinese office have made Declarations requiring... Read more

9 February 2022 UK IPO Calls for Views: UK Designs Following the UK’s departure from the European Union (EU), the UK is no longer subject to EU law. The UK, therefore, has the opportunity to implement changes to its domestic design regime and diverge from EU design law & practice. In advance of implementing any changes, the UK Intellectual Property Office (UK IPO) has launched a public consultation on the current UK... Read more

24 November 2021 Measures Being Taken by EPO, EUIPO, WIPO and UK IPO in Relation to COVID-19 Pandemic The European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (IPO) and the International Bureau (IB) of WIPO all remain operational and will allocate filing dates for newly filed cases and accept other submissions/fee payments as normal. However, a number of measures have been adopted by the offices to assist applicants in view... Read more

1 January 2021 The New Regime for Trade Mark and Design Protection in the UK and Europe The UK withdrew from the EU (Brexit) on 31 January 2020, and the transition period ended on 31 December 2020. The UK is no longer subject to EU law or the jurisdiction of the European Court of Justice. EU Trade Mark and Design rights no longer have territorial effect in the UK. It is therefore now a practical necessity to... Read more

23 November 2020 UK Changes Allowable Location of Address for Service for 2021 The UK government has announced that it intends to proceed with changes to UK legislation governing the “address for service”that may be used for intellectual property rights, with associated legislation currently being laid before Parliament. An address for service is a correspondence address given to the UK Intellectual Property Office (UKPIO) by proprietors of IP rights. Usually the IP attorney... Read more

22 October 2020 J A Kemp Practice Head Recognised as Global Leader by World Trademark Review James Fish, the Head of J A Kemp’s Trade Marks practice, has been recognised by World Trademark Review (WTR) as a Global Leader. WTR Global Leaders draws on the WTR 1000 and the WTR 300 to identify the “best of the best” in trade mark practice. To qualify for inclusion in WTR Global Leaders, individuals must be ranked in the... Read more

16 September 2020 Claiming Priority for EU IPO Registered Community Designs (RCDs) Simplified From 12 September 2020 the European Union Intellectual Property Office (EU IPO) will participate in the World Intellectual Property Organisation (WIPO) Digital Access Service (DAS) as an office of second filing. This enables users to supply the EU IPO with a DAS code on filing a priority-claiming registered design application, and thereby automate the transmission of the priority document(s) to... Read more

14 September 2020 EPO to Trial Zoom as a Platform for Oral Proceedings by Video Conference The EPO announced today that it will be testing Zoom as a platform for “oral proceedings involving multiple opponents and/or requiring simultaneous interpretation”. Up until now, the EPO has been using Skype as the platform for video conference oral proceedings. However, a limitation of Skype is that it does not allow for multiple distinct audio channels, which would be necessary... Read more

11 September 2020 UKIPO is Calling for Views on the Impact of AI on IP Rights The UKIPO has issued an open consultation including a call for views in relation to artificial intelligence and intellectual property. The consultation includes a number of questions in various fields of intellectual property (IP) including patents, designs, trademarks and copyright, inviting respondents to contribute their opinions on the present and future legal framework of how these rights interact with developments... Read more

28 May 2020 UK Court Shows Red Card to Sky in SkyKick Case The High Court has issued its decision in the Sky v SkyKick case. The judgment follows the Advocate General’s Opinion and the Court of Justice of the European Union’s (CJEU) decision of 29 January 2020 on questions referred to it by the High Court regarding broad specifications of goods and services. Read our analysis of the decision in this briefing. Read more

27 April 2020 Fake European Intellectual Property Office (EUIPO) Invoices Anew fake invoice scam is targeting EU trade mark owners. To date, this scam has targeted businesses in Spain but this practice may well spread further afield and perhaps to wherever EU trade mark owners are to be found. The misleading invoice appears in the form of a fake decision issued by the European Intellectual Property Office (EUIPO). The invoice... Read more

14 April 2020 FICPI Issues Summary of Covid-19 Extensions at Worldwide IP Offices The IP attorney membership organisation FICPI has produced a guide on changes to deadlines and arrangements for national, regional and international IP offices as a consequence of coronavirus. Here you will find a regularly updated spreadsheet (follow this link) of information updated frequently by members of FICPI’s global community. For the latest on extensions available at the EPO, UK IPO... Read more

2 April 2020 EPO Announces that Examining Division Oral Proceedings will be via Videoconference The President of the EPO issued a decisionon 1 April 2020 concerning oral proceedings before examining divisions. A noticewas also issued, which provides additional information regarding oral proceedings held by videoconference. According to the President’s decision, oral proceedings before examining divisions will take place by videoconference, unless there are serious reasons for the oral proceedings to take place on the... Read more

21 March 2019 Canada Joins Key Trade Mark Treaties Canada’s long-awaited implementation of three key trade mark treaties took an important step in the right direction this week, as it deposited instruments of accession with WIPO. WIPO Director General Francis Gurry received the instruments of accession to the Madrid Protocol, Nice Agreement and the Singapore Treaty from Canadian Ambassador Stephen de Boer. The treaties will enter into force in... Read more

18 March 2019 WIPO UDRP Cases Up for Fifth Straight Year: What That Means for Brand Owners On Friday 15 March 2019 the World Intellectual Property Organization (WIPO) released its Uniform Domain-Name Dispute-Resolution Policy (UDRP) statistics for the 2018 calendar year. As always the information is useful for brand owners and particularly those interested in knowing more about what their peers are doing in the online brand protection space. Read our analysis here. If you’d like to... Read more

4 February 2019 J A Kemp Trade Mark Team Highly Recommended in the 2019 Edition of World Trademark Review 1000 J A Kemp has once again been recognised as a Highly Recommended firm in this year’s edition of World Trademark Review 1000. The publication comments that the firm is the leading firm in the so-called ‘golden triangle’ of London, Oxford and Cambridge. It goes on to say that “outstanding performance is another important thread in the J A Kemp narrative”.... Read more

11 January 2019 UK Implements EU Trade Mark Directive Following the changes that took place within the EU trade mark system as of March 2016 and October 2017, the UK government has today implemented the EU Trade Mark Directive into UK law. The implementation of the Directive brings about several important changes in UK trade mark law, including: The removal of the graphical representation requirement, making it easier for... Read more

15 November 2018 Draft Agreement on the Withdrawal of the UK from the EU and Political Declaration The UK Government Cabinet yesterday approved a draft agreement on the Withdrawal of the United Kingdom (UK) from the European Union (EU). The draft agreement sets out a proposed manner of the UK’s withdrawal from the EU. The draft agreement includes provisions relating to a 21 month transitional period following the UK leaving the EU on 29 March 2019. A... Read more

25 July 2018 Nestlé Loses KitKat Appeal The European Court of Justice today dismissed the appeal by Nestlé in its long-running battle with Cadbury over the shape of its KitKat chocolate bar. The Court upheld the General Court’s judgment that the acquisition of distinctive character by a mark that was initially devoid of inherent distinctive character must be shown throughout the EU, and not only in a... Read more

4 April 2018 What the Crocs Case Tells Us About Obscure Disclosures The novelty requirements for EU registered designs have peculiar provisions aiming to protect the validity of designs from obscure disclosures outside the EU. The Crocs case (T-651/16) provides some pointers as to when an internet disclosure might be considered obscure. To read our full briefing on this subject please click here. Read more

16 March 2018 UK Joins Hague Convention for International Designs On 13 March 2018, the UK Government ratified the Geneva Act (1999) of the Hague Agreement for the international registration of designs, which will come into effect on 13 June 2018. The Hague system provides an international application and registration procedure for industrial designs. The system allows an applicant to obtain protection in multiple countries by filing a single application... Read more

7 March 2018 Sieckmann Strikes Again – EUIPO Board of Appeal Cancels ‘Imprecise’ Colour Combination Mark The EUIPO Board of Appeal recently upheld a request for a declaration of invalidity against a colour combination mark, on the grounds that its imprecision allowed for multiple different combinations of the two colours. Despite a variety of arguments from the parties ranging from acquired distinctiveness to bad faith, the Board of Appeal’s decision turned on the simple question of... Read more

28 February 2018 Trade Marks and Designs: EU Commission Draft Withdrawal Agreement Addresses IP Rights The EU Commission has today, 28 February 2018, published the text of the draft Withdrawal Agreement setting out their vision for the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union. There are no surprises relating to IP in the draft text which will now be discussed with the European Council and the Brexit... Read more

13 September 2017 New Trade Mark Law in the Cayman Islands A new trade mark law has come into effect in the Cayman Islands. The primary change brought about by the new law is the abolition of the “re-registration” system. Previously, those wishing to register trade marks in the Cayman Islands were required to have an existing trade mark registration with effect in the UK, which was then re-registered in the... Read more

12 September 2017 World Trademark Review 1000 2015 J A Kemp maintained its ranking as a leading UK trade mark attorney firm in the 2015 edition of World Trademark Review 1000. The directory commented that J A Kemp ‘s style isrefreshingly open and approachable, coupled with super-efficient service.They are a top-notch firm in all things trademark. Their service really adds value, as they provide solid substantive analysis and... Read more

12 September 2017 Possible Risk to Business from Counterfeit Goods On Tuesday 14 January 2014, the United Nations Office on Drugs and Crime (UNODC) will launch a new campaign with the slogan Counterfeit: Don ‘t buy into organised crime to raise awareness about counterfeit goods and transnational organised crime. The proliferation of counterfeit goods is a global problem that is valued at an estimated $250 billion a year, with digital... Read more

24 July 2017 India Introduces New Trade Mark Rules New trade mark rules have taken effect in India which have introduced a number of changes in practice. For many applicants, the main difference will be a substantial increase in official fees. However, individuals, startups and small entities will benefit from a new differential application fee which is 50% lower than that for other applicants. Other key changes include the... Read more

24 July 2017 Next Step for EU Trade Mark Regulation: Further Reforms Coming into Force Amendments to the EU Trade Mark Regulation on 23 March 2016 brought about substantial changes to the EU trade mark system. However, not all of the changes were implemented with immediate effect. With the publication of Regulation No. 2017/1001 in the EU Official Journal on 16 June 2017, we are reminded that several significant reforms will enter into force on... Read more

18 January 2017 J A Kemp Team Highly Recommended by World Trademark Review 1000 J A Kemp has once again been recognised as a Highly Recommended firm in this year ‘s edition of World Trademark Review 1000. The publication calls J A Kemp a go-to for UK and European trademark matters its expert practitioners provide practical advice quickly and for a fair price, and impress at every turn. The four partners heading up the... Read more

13 December 2016 Design Rights in Lockers Secured We are pleased to report the successful enforcement of our client Action Storage Systems Limited ‘s UK unregistered Design Rights in their highly successful eXtreme plastic locker. The IPEC judgement, handed down by Judge Hacon on 7 December, demonstrates the power of the unregistered Design Right in restraining copying and the power of disclosure in revealing evidence of copying. Various... Read more

24 November 2016 ITMA Becomes CITMA (The Chartered Institute of Trade Mark Attorneys) Today, 24 November 2016, sees the launch of The Chartered Institute of Trade Mark Attorneys (CITMA) in the UK. The Institute of Trade Mark Attorneys (ITMA) was granted a Royal Charter in April 2016, paving the way for it to become CITMA. This means that J A Kemp ‘s registered trade mark attorneys now hold the title Chartered Trade Mark... Read more

19 October 2016 Bloomberg World Intellectual Property Report – UK Extends Copyright Terms for Artistic Works An article written by J A Kemp partners Alan Bryson and Tom Carver on the subject of UK extension of copyright terms for artistic works has been featured in Bloomberg BNA’s October issue. The article looks in detail at the impact that the recent repealing of Section 52 will have and explores what constitutes a work of artistic craftsmanship according... Read more

12 September 2016 Trade Mark and Designs Considerations Following the UK’s EU Referendum The referendum vote to leave the European Union (EU) does not bring about any immediate changes to IP law. EU trade mark (TM) registrations and EU registered designs remain in force in the UK. This will continue at least until the moment that the UK leaves the EU. At that point, new laws that have not yet been devised are... Read more

28 April 2016 The Institute of Trade Mark Attorneys is Granted a Royal Charter The application by the United Kingdom ‘s Institute of Trade Mark Attorneys (ITMA) for Chartered ‘ status has been given royal approval after it was granted a Royal Charter by The Queen this month. The announcement paves the way for ITMA to become the Chartered Institute of Trade Mark Attorneys (CITMA) and for Registered Trade Mark Attorneys who are members... Read more

4 February 2016 J A Kemp Shortlisted for Trade Mark Prosecution Firm of the Year J A Kemp has been shortlisted in the category of UK Firm of the Year for Trade Mark Prosecution in the MIP (Managing Intellectual Property) Global Awards. The awards recognise outstanding firms across Europe, Asia Pacific and Latin America. The winners will be announced on 10 March. Full details of Global Award nominations can be found here. Read more

18 January 2016 J A Kemp ‘s Team Recognised by World Trademark Review 1000 2016 J A Kemp has once again been recognised as a leading firm of trade mark practitioners by World Trademark Review 1000. All four of J A Kemp ‘s trade mark partners have also been ranked. The firm received a silver ranking, as did practice head James Fish and partner Ben Mooneapillay. Two other Partners, Tom Albertini and Charlotte Stirling, received... Read more

13 November 2015 Company Scamming UK Intellectual Property Office Customers Found Liable for Trade Mark Infringement and Passing Off The UK Intellectual Property Office (UK IPO), the European Patent Office (EPO) and World Intellectual Property Organization (WIPO) continue to receive reports of applicants and proprietors being approached for payment by firms fraudulently offering to perform official processing, such as registering patents and publishing patent applications. These so-called scammers often use names, abbreviations and/or logos which are confusingly similar to... Read more

10 November 2015 CJEU Decision on Geographical Extent of CTM Reputation On 3 September 2015 the CJEU issued its Decision in Case C-125/14. The Decision answered questions referred from the Hungarian Intellectual Property Office seeking to clarify, in particular, the geographical extent of reputation required for CTMs to constitute a reputation in the Community. For more information please see our briefing on the topic. This briefing looks at the CJEU ‘s... Read more

7 September 2015 OHIM Cooperation Fund User Association Meeting Trade Mark Partner James Fish will be attending a User Association meeting of OHIM ‘s Cooperation Fund before OHIM ‘s Liaison Office in Brussels on 8 September 2015 on behalf of FICPI. Read more

30 June 2014 Intellectual Property Act 2014 – IPO Guidance in relation to Changes in Design Law Published Today The UK Intellectual Property Office (IPO) has today issued a pamphlet detailing changes to UK design law and how this might affect businesses. Key changes for businesses are: the change in the default ownership of a commissioned design – in the absence of a contract which states otherwise, the designer is now the owner of the rights to the design... Read more

3 April 2014 UK Intellectual Property Bill Passed By Parliament Yesterday An IP Bill introducing changes to patent and design law in the UK was passed yesterday by Parliament. Following the formality of royal assent, the changes will be implemented into the statute. The changes can be grouped into three items and below are links to three briefings on these items. Briefly the changes to the patent and design law in... Read more