The UK Intellectual Property Office launched a second consultation on its IPO Transformation programme on 22 August. It focuses on trade mark and design issues.

The consultation can be accessed on the IPO website here and the deadline for responding is 31 October 2023.

The consultation covers six areas for potential changes to IPO services and processes:

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

Series marks

The changes to series trade marks are particularly relevant for trade mark practitioners. The UK is unusual in allowing applicants to file for up to six marks in a single application provided the marks “resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identify of the trade mark".

The IPO says annual demand for series marks has followed broader trade mark filing trends, with 25,000 applications in 2021 and 16,000 in 2022 (about 10% of domestic applications).

On average, 65% of series trade mark applications are filed by unrepresented applicants. In 2022, 39% of these were objected to while 17% of series marks filed by represented applicants were objected to.

The consultation asks “whether the series mark provisions are still functioning effectively and delivering value to customers”. It invites comments on:

• Maintaining the current legal framework providing for series marks;
• Reducing the number of allowed marks in a series; and
• Abolishing series marks

The consultation states:

Based on the evidence we presently have, the government’s current preference is to cease offering series marks. This will address the current difficulties caused by improper use of the system. Many valid series applications are received and registered each year. However, the negligible benefit these appear to confer on rightsholders are outweighed by the potential gains to be achieved through simplifying the application processes.

However, the IPO says is interested in any evidence that shows concrete benefits to customers in holding series marks, and any comments or mitigating actions that could help overcome the issues identified. It also welcomes views on anticipated advantages/disadvantages of the proposals, or potential unintended consequences.

Find out more and respond to all the consultation points on the IPO website here.