Williams Powell

British and European Patent and Trade Mark Attorneys

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Williams Powell

11 Staple Inn
London
WC1V 7QH
United Kingdom

T: +44 207 242 7005

F: +44 207 242 7115

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Recent News:

Delays to Opening of Unified Patent Court?
It was understood that UK Government had planned to ratify the UPC agreement in May 2017 so that the Unified Patents Court could open by the end of the year.  However, that timetable now looks li...
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UK Government Preparing to Ratify Unified Patent Court Agreement
On 28 November 2016 the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA), which is part of the process required to establish the Unit...
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EPO Added Subject Matter Test is Relaxed
Over the past few years, the assessment by the European Patent Office of any amendments made to an application or patent in connection with the issue of added subject matter has been extremely strict....
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UK Procedures Assist German Patent Litigation
There are two primary schools of thought in patent litigation proceedings in Europe: 1) the unitary trial system followed for example by the UK Courts, where the issues of validity and infringement of...
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Practical tips for UK and EU design registrations in view of the UK Trunki decision
In the wake of the UK Supreme Court's Trunki decision, designers may now be questioning the value of registered designs to protect their products in the UK.  However, during a panel discussion at...
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UK Patent Box to be Revised

The UK Patent Box has enjoyed a good level of success.  According to the UK Government, by mid 2015 over 639 companies had used it and received a benefit totaling £335,000,000.  

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For many years the “class headings” of the Nice classification system have been considered to cover all goods or services included in the class, even where this appeared counter-intuitive. The IP Translator test case established that this convention no longer applies, and has caused the European Commission to revise its approach to classification. An amendment to the relevant regulations will shortly come into effect, making the following changes: 

  1. “Class headings” will no longer be deemed to include coverage for all goods or services in the class, but only the goods or services covered by the literal meaning of the heading. Taking the IP Translator example, the class 41 heading, “education; providing of training; entertainment; sporting and cultural activities”, will no longer be considered to include “translation services”, which will therefore need to be expressly stated. 
  2. The owners of trade marks registered in respect of the entire heading of a Nice class may apply to OHIM to amend such specifications by declaring that their intention on the date of filing had been to seek protection for goods or services beyond those covered by the literal meaning of the heading.
  3. A transitional period of 6 months commencing with the coming into effect of the Amending Regulation will be allowed for trade mark owners to request such amendments.
  4. Only marks applied for before 22 June 2012 and which are still registered for one or more class headings may be amended in this way.
  5. No official fee is payable for such amendments
  6. Trade mark owners with CTM registrations which rely on the former, broad interpretation of class headings may lose protection for relevant goods or services once the new law comes into effect. This will not affect all trade marks: a registration covering clothing, footwear and headgear in class 25 will continue to provide protection for items of clothing, footwear and headgear in the same way that it has for many years. However, even the comparatively simple class 25 includes items such as “hat frames [skeletons]” which are arguably not items of clothing, footwear or headgear, and which might therefore need to be listed as separate items, if the trade mark is used for such goods. 

Our practical advice is that trade mark owners review their registration certificates and ask themselves whether their specifications of goods and services clearly and unambiguously cover the items which they actually manufacture and sell, or the services which they provide. If in doubt, we shall be happy to advise.