UK, Latvia, Turkmenistan, and US revise IP procedures
UK
The United Kingdom (UK) recently implemented amendments to its trademark legislation as of November 21, 2024, in preparation for updates to the Madrid Protocol, which were required to be completed by February 1, 2025, aligning UK trademark practices with international requirements.
As per the newly implemented trademark law, it is now possible for UK trademark holders to request the partial replacement of trademarks registered in the UK with international registrations under the Madrid System.
The previous legislation only allowed for the replacement of a national trademark with an international one when the international mark covered all goods and services included in the original national right.
In accordance with the new system, however, national trademarks can now be partially replaced by an international mark, even when it is only set to protect some of the goods and services listed in the national registration.
The new trademark procedures are set to benefit trademark rights holders through the ability to not only transfer rights from national to international registrations, but to maintain protection for goods and services through national rights in instances whereby an international mark would not be able to cover them in their entirety.
Latvia
In accordance with new EU-wide procedures regarding Geographical Indications (GIs) for craft and industrial products, jurisdictions across Europe are updating their national legislation to facilitate and implement the EU procedural amendments at a domestic level.
The new GI procedures will enter into force in the EU on December 1, 2025, following the enactment of the “Regulation on geographical indication protection for craft and industrial products” on November 16, 2023. GIs which fall under the craft and industrial product category will include goods such as jewellery, textiles, glass, porcelain, and furniture.
One such jurisdiction updating its national law in accordance with the EU Regulation is Latvia, which will now be bound by a two-stage registration system for GIs related to craft and industrial products. These legislative amendments are based on the information report “On the establishment of a registration system for geographical indications of craft and industrial products in Latvia”.
The first of the two stages for the new Latvian GI registration procedure will require the applicant (the manufacturer(s)) to submit an application to the IP Office of Latvia, as the Member State where protection is sought and where the product originates. That State will then assess the application, with the GI going through the opposition procedure of that jurisdiction. Once complete, and upon a positive assessment of the application, it will later be submitted to the European Union Intellectual Property Office (EUIPO).
The second stage of the registration process will comprise the examination of the GI application by the EUIPO and its opposition procedure, before a decision as to the grant or refusal of the GI is made. The EUIPO will also register the name and type of GI, as well as the country or countries of origin and the name of the applicant(s) within the EU Register.
In order to qualify for GI protection under the new regulations, a craft or industrial product must meet certain criteria. These include whether the product originates from a specific place, region, or country, and if it possesses a given quality, reputation, or other characteristic essentially attributable to its geographical origin. Moreover, at least one stage of the manufacturing process of the product must take place in the defined geographical area.
In addition, the new GI Regulation requires EU Member States to enforce penalties in relation to infringements of the Regulations. As a result, the Latvian Trademark Law now imposes fines of up to 350 EUR for individuals and 3,000 EUR for legal entities.
With the new European Regulations aiming to increase the use of GIs and specialty products across the EU, as well as to simplify the procedures for their registration and increase levels of protection, it is hoped that both manufacturers and economies across the region will benefit from the legislative amendments.
Turkmenistan
Turkmenistan recently deposited its instrument of accession to the Protocol to the Eurasian Patent Convention (EAPC) for the Protection of Industrial Designs, with the Protocol entering into force on January 4, 2025 in the jurisdiction.
The EAPC underpins the system and procedures for the filing and maintenance of Eurasian IP rights. As per the Eurasian Protocol in relation to industrial designs, applicants are able to file a single Eurasian design application comprising up to 100 designs in the same class, covering all 8 Member States of the EAPO.
Once granted, the Eurasian design will have simultaneous legal effect in Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and, from January 4, 2025, Turkmenistan.
The accession of Turkmenistan to the Protocol is set to encourage further filings for Eurasian IP protection, with the regional industrial design system increasing in popularity rapidly since its genesis in 2021.
United States
The United States Patent and Trademark Office (USPTO) recently implemented amendments to its patent fees effective January 19, 2025, alongside the alterations to trademark fees, which were previously reported here.
Among the key amendments, the fee in relation to excess patent claims has doubled, increasing from 100 USD to 200 USD for each claim beyond the 20th.
Moreover, the fees for Requests for Continued Examination (RCE) have all seen substantial inflation, with the cost for the first RCE having inflated by 25% from 1,200 USD to 1,500 USD, and by 43% from 2,000 USD to 2,860 USD for each subsequent RCE thereafter.
A new surcharge has also been applied for the filing of an application or the presentation of a benefit claim more than six years after the earliest benefit date, which constitutes 2,700 USD, and 4,000 USD when filed after nine years.
Further new fees have also been introduced, including a staggered fee structure regarding Information Disclosure Statements (IDS) exceeding 50 references, amending the previous structure of having one standardized fee applicable for all IDS submissions. As such, applicants are now required to pay a fee of 200 USD for the filing of 51-100 references, 500 USD for 101-200 references, and 800 USD for 201 and more references.
The fee changes implemented by the USPTO are in line with the pattern of fee reviews that take place for US IP matters once every two years, in order to ensure the USPTO has adequate funding to provide the best resources possible for applicants.