What types of product were most trade mark registrations applied for in 2002/03? What is the online Trade Marks Journal all about? Have design registration applications increased since the rules changed?
Topic: Trade marks & designs
Who: The UK Patent Office
When: September 2003
The UK Patent Office, the body responsible for the establishment and maintenance of the national framework of intellectual property rights (patents, designs, trade marks and copyright) published its annual report for 2002/3.
Apart from reporting the results of a Radio 4 'Best invention' poll to mark the Patent Office's 150th anniversary (the bicycle came top with 70% of the votes) the report contains many other interesting nuggets.
It mentions its role in the Government's 'Innovation review' launched in October 2002. Designed to explore what innovation is, what contribution it makes to improving the UK's productivity and what can be done to help spread innovative best practice, the review reached, with the help of the Patent Office, findings in seventeen broad areas. These included a finding that there was a disturbing lack of knowledge of intellectual property and how to make the most appropriate use of it within business and that users find the system difficult and costly to use when trying to protect their intellectual property assets and exploit their ideas.
That Review progresses. On the IT front, there is progress towards dumping paper case files for the processing of trade mark and patent applications. As and when this is completed, electronic dossiers, as well as improving internal processing, will allow on-line file inspection to check how an application is progressing.
Another major step towards electronic business has been the successful launch of the on-line Trade Marks Journal ('TMJ'). This is free, in colour and allows flexible viewing of marks. All applications to register trade marks in the UK have to be advertised in the TMJ before they can be accepted for registration. If an objection is lodged within three months after advertising in the TMJ, then the application cannot proceed until that objection has been sorted. Monitoring of the TMJ can therefore be an excellent way for brand owners to keep track of what marks are being applied for and whether they might have uncomfortable similarities with their own marks, so that an objection can be immediately lodged.
In terms of processing of trade mark applications and how the Patent Office performed, during the year, 53,969 trade mark examinations were completed, and of the total received, 96.2% were examined within two months of date capture, with 98% of correspondence being answered within four weeks.
As for the level of applications, these have in fact fallen by 1%. The Patent Office puts this down to the ending of the .com era but others might suspect that the increasing popularity of applying for a Community Trade Mark as opposed to a single country UK registration has got something to do with this.
In terms of trends in trade mark applications, Class 9 (Scientific) continues to be the most heavily employed classification with 5,381 applications. The second most popular was Class 41 (education, provision of training; entertainment; sporting and cultural activities) and third with 4,142 publications was Class 35 (advertising, business management, business administration etc).
So far as designs are concerned, the Community Design System recently reported by marketinglaw.co.uk is now in place and offering more opportunities to UK applicants and rights owners to protect their intellectual property in this area. It is anticipated that as a result, demand for purely UK registrations will reduce significantly.
Back at trade mark registration, the Patent Office's launch in December 2002 of its system for electronic filing of trade mark applications has had a disappointing take-up, and there seems to be a chance that it will be discontinued as a result.
In the area of monitoring, the report indicates that the office will soon be launching an 'e-caveat' alert service which will allow customers a direct view of any up-dates to the information available regarding progression of any particular trade mark application.
Plans are also afoot to try and streamline the trade mark opposition process and proposals look imminent on this front. Improvements to the on-line trade mark searching service are also in prospect.
Financially the picture looks pretty rosy, with an operating surplus for the period of £10.1m. This has not been due to trade mark renewals, where a 'trench' situation currently obtains owing to the move from renewals every seven years to renewals every ten years following the coming into force of the 1994 Trade marks Act. However patent applications and renewals have been buoyant and expenditure has been lower than planned due to efficiency measures.
Looking ahead, targets for 2003/4 include the registering of correctly filed design registration applications within three months of the date of application provided no substantive objections have been raised. Regarding trade marks, the objective is to reduce to an average of twenty-six weeks the time taken to issue a decision as to whether a trade mark should be registered, provided there has been no opposition.