Each year the UKIPO publish facts and figures relating to the trade mark, patent and design filings of the previous calendar year. The 2022 figures have recently been released, and there are some intriguing patterns emerging. Overall, new application filings were down from record 2021 numbers but still significantly above the figures in 2020, while oppositions to trade mark applications grew significantly despite the drop in filings from 2021.
We discuss the key issues below with implications and advice for what brand owners should do with some data also received in the first two quarters of 2023.
- Filings fall...to 2ndhighest level
Since 2021, the total number of trade mark filings had been increasing year on year. While only 95,203 trade mark applications were filed at the UKIPO in 2017, filings grew to 196,639 in 2021 – an increase of 107% in 5 years. Each successive year was a record filing year.
However, 2022 saw a 19% fall with the total number of filings dropping to 158,821. This may be a sizeable step down in filings, but it is important to note that it is still comfortably the 2nd highest filing year.
The UKIPO have commented on these trends, attributing the previous surge to an increasing number of filings by Chinese applicants, the impact of the Covid-19 pandemic (for example, Applicants seeking trade mark protection for their diversified commercial activities), and of course the UK's exit from the European Union. While it seems that the first two of these factors have influenced filing trends at other IP Offices around the world, the latter is naturally a unique influence upon trends at the UKIPO.
Current data from the first two quarters of 2023 published by the UKIPO indicates filings are roughly stable with 2022 figures – with 80521 applications filed from January-June 2023 (slightly higher than 50% of 2022 figures, but noting that there was a slight drop in filing numbers in the final 6 months of 2022).
- More trade mark registrations than applications filed
Seemingly illogical, but true – 2022 was the first year that the UKIPO registered more trade mark applications than were filed. This quirky fact is indeed possible as successful applications do not necessarily reach registration in the year in which they were filed. For example, an application filed 31 December 2021 could not achieve registration until 2022.
Similarly to filing totals, the number of registrations in 2022 fell from a 2021's record high too. However, the drop in total registrations was only 3.5% (much smaller than the 19% drop in filings).
It seems the UKIPO are still working through the applications from the bumper filing years of 2020 and 2021, and that this prosecution is buoying annual registration numbers for 2022. It therefore seems likely that there may be a more significant step down in the total registration numbers for the year 2023, as the 2020/2021 prosecution backlog is cleared and with fewer filings from 2022 following them.
- Citations in official searches and resulting notifications
When UK TM applications are examined by the UKIPO, the examination includes a search for earlier registrations of similar TMs. The Applicant is provided with details of any trade marks cited in the search report, and given the opportunity to amend or withdraw the application before it proceeds. When the application does proceed and the owners of the earlier cited TMs are notified, this can prompt oppositions.
These warning notifications are important, and TM owners must consider them carefully if they are to ensure that their registered rights do not become diluted. This may include taking professional advice and taking steps to oppose or otherwise object to use or registration of the trade mark.
In 2022 the number of applications in which the official search cited an earlier conflicting trade mark was 31,112. This represents a drop from the 41,799 citations raised in 2021. This might be expected in light of the lower number of filings, although this drop is slightly greater than the fall in the number of filings - which is a little surprising.
The average number of citations raised per application in which at least 1 citation was raised was steady (~4.0 citations) across the years 2021 and 2022. Figures for 2023 are a little lower which suggests examiners are potentially notifying fewer earlier trade mark owners of later filed applications.
- Threatened oppositions
The opposition period in the UK is two months from 'publication'. However, trade mark owners can obtain a 1 month extension to this timeframe by filing a TM7a 'Notice of threatened opposition'. This process puts the Applicant on notice that a third party is considering bringing an opposition.
We have seen a dramatic rise in the number of TM7As being filed since 2020. In 2021, the number of filed TM7As rose by 87% year on year to reach 13,978. The total number of TM7As filed in 2022 dropped slightly to 13,108, however this is still an incredibly high number of threatened oppositions when considered against the backdrop of a 19% fall in total filings.
As noted above, an application filed one year may not receive a TM7A until the following year. Nonetheless, loosely comparing filing figures and threatened oppositions in 2021 and 2022 suggests that the proportion of filings to receive a threat of opposition has grown from ~6% to ~8%.
- Formal oppositions
There was also a significant rise in the number of oppositions (TM7s) served in 2022 despite fewer applications being filed than in 2021.
Formal oppositions had already jumped from 3,962 in 2020 to 6,793 in 2021 (a rise of 71% year on year) but 2022 saw 9,529 oppositions served – an increase of 40% year on year.
The annual number of oppositions served at the UKIPO has more than doubled since 2019. This is a consequence of the growth of the UK TM Register outlined above, and follows bumper filing years of 2020 and 2021.
However, the increase is somewhat surprising since fewer applications were filed in 2022 than 2021. Though the numbers might partially reflect that a large number of applications which were filed in the record filing year in 2021 would only have received formal oppositions in 2022, the lag in opposition does not appear to explain the increase completely. The rise in opposition numbers may point to an increased awareness among earlier trade mark owners of later applications, and/or an increased likelihood that they will take action to defend their rights.
Official figures received from the UKIPO so far in the first two quarters of 2023 indicate that 3955 oppositions have been served from January-June 2023. This is a little down on the average rate for 2022 rate but is still tracking significantly above 2021 numbers.
- Negotiations
Many threatened oppositions and most formal opposition proceedings are settled by some form of agreement, resulting in either the opposition or the application being withdrawn or amended. The rules of opposition proceedings in the UK allow for a cooling-off period for discussion of a possible settlement before the opposition has to be defended formally.
The number of opposition proceedings at the UKIPO may have risen dramatically in 2022, but the requests to enter cooling-off periods rose significantly too. The number of requests to enter the cooling-off period in 2022 nearly doubled from 2021's figures, and TM9C cooling off requests were received by the UKIPO in approximately 27% of the 2022's served oppositions (compared to approximately 19% in 2021).
This seems to suggest that while there is a trend of increased numbers of opposition to applications, earlier trade mark owners and applicants are nonetheless more likely to pursue amicable settlement of oppositions where possible.
- Summary
- New trade mark application filings fell in 2022 as compared to 2021
- Numbers of oppositions have increased dramatically from 2021 to 2022
- A higher percentage of oppositions appear to be resulting in settlement discussions than previously.
The picture for 2023 so far looks similar to 2022. Filing numbers are comparable. There appear to be slightly fewer oppositions served from January – June than the overall rate for the calendar year in 2022, but this might in part be the result of a number of 2022 oppositions relating to Applications filed in the record year for trade mark filings in 2021.
What should brand owners do?
Search to avoid infringement risks for new brands
Given the increased number of trade mark filings in the UK and the dramatic increase in the size of the UK trade mark register following the cloning of EUTMs onto the UK register after Brexit, conducting availability searching before using and applying is particularly important.
Brand owners should therefore take specialist advice on how to manage the infringement and opposition risks.
TM portfolio management
The UK TM portfolios of most businesses have increased significantly post-Brexit, adding to costs and the administrative burden. We recommend undertaking regular portfolio reviews to keep on top of renewals, maintain up-to-date details and ensure that the portfolio continues to be accurate and reflective of your business needs and support strategies for enforcement to keep brands exclusive and avoid confusion.
Monitoring and watching
For the owners of registered UK TMs the increased numbers of filings also make it particularly important to have a strategy in place for managing notifications received from the UKIPO of the filing of later applications. Brand owners should devise a strategy of when and where to take action.
As discussed above, there is slight decrease in the number of notifications being sent out from the UKIPO so brand owners should also consider subscribing to trade mark monitoring and watching packages to be notified of the filing of potentially conflicting marks and avoiding dilution of brands and confusion in the marketplace.
To assist TM owners manage these citations, Marks & Clerk has developed an effective process for managing notifications, delivering succinct advice and facilitating fast decision making. Our highly trained and experienced team uses specific workflow systems to ensure this support is delivered cost-efficiently and at a high quality.
Seek specialist UK TM professional advice
The significant increase in size of the UK trade mark register and growth in oppositions presents new challenges to brand owners so seeking specialist advice is particularly valuable.
It is also the case that from January 2023 the UKIPO has made it necessary for trade mark owners based outside the UK to appoint UK-based representatives to file applications and oppositions and defend challenges to existing trade mark registrations. As such it is particularly important for brand owners to seek UK specialist advice to ensure there is no loss of rights or delay in receiving communications.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
