SCIT.ATR.TM.2004.GB

Annual Technical Report 2004 on Trademark Information Activities submitted by United Kingdom (SCIT/ATR/TM/2004/GB)

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I. Evolution of registration activities

Changes experienced in terms of application filings and registrations with respect to the previous year

National Applications

2003 Applications: 26,524
2004 Applications: 26,938

International Designations

2003 Designations: 8,013
2004 Designations: 7,818

Trends or areas experiencing rapid changes with respect to the previous year

Domestic TM mark demand remains buoyant. Demand in 2004 was 3% higher than in 2003 and currently comparing the first 6 months of 2005 to the same period in 2004 it is up by 4.5%. The TM profession has confirmed that they likewise are experiencing /seeing a rise in applications in their in trays.

International applications ( applications designating the UK for protection under the Madrid Protocol ) are down by 2.5% in 2004 compared with 2003. In the first 6 months of 2005 they are down by 8.5% compared with the same period in 2004.

II. Matters concerning the generation, reproduction, and distribution of secondary sources of trademark information, i.e., trademark gazettes

Publishing, printing, copying techniques

The weekly Trade Marks Journal is published in electronic form only. The Journal is produced and edited via networked PCs by the JEEPS system using BroadVision QuickSilver desk top publishing software. Bibliographic data for the Journal is transferred from the mainframe OPTICS system with figurative data being taken from IBIS (Integrated Bibliographic and Image System). The Journal is then made available on our web site for public view.Once published, trade marks face a three months period where opposition to registration may be filed.

Designations made under the Madrid Protocol are also published in the Trade Marks Journal for opposition purposes. Bilbliographic and figurative data are obtained from the specialised TMAD system.

The Journal is searchable by agent, proprietor, mark or image. Journals are retained on our website www.patent.gov.uk for a period of 12 months. Previous Journals are available on CD as are current versions as single purchases or by subscription. A downloadable pdf version of the Journal is also

Main types of announcements of the Office in the field of trademark information

The electronic Journal also contains a section called the Journal Backpart where announcements relating to trade mark applications and registrations are listed. Announcements include changes to names & addresses, marks entered onto the register, assignment of marks and details of trade mark licensees.

Notices regarding changes of practice, office procedures, names and contact details of office officials and other changes are published on our web site in the specialised trade mark section.

Word processing and office automation

All staff in the UK Trade Marks Registry are equipped with networked Pentium 4 PCs which are connected to a local area network running Novell Netware 6. Standard automation products available to all staff include Microsoft Office products such as Word and Excel. The office currently runs on Windows NT4 but is due to migrate to Windows XP Professional later this year.

An object orientated system is available for generating examination reports. This uses DAIS, a CORBA compliant object request broker, to manage the acquisition of bibliographic data from the OPTICS mainframe and the Image data from IBIS. These details are compiled into a report produced in Word. This system is known as TERN. The image database system IBIS is based on Documentum but is customised to our own requirements. The IBIS system allows for the viewing of bibliographic information in addition to figurative details.

A PC system called QUALS is available to trade mark examiners via their networked PCs allowing them to view and print details of cases discussed at weekly quality meetings.

Techniques used for the generation of trademark information (printing, recording, photocomposing, etc.)

The main channels for the distribution of trade mark information are:

a) For individual applications or registrations through the Trade Marks Journal publication and through changes notified in the Journal Backpart
b) Via our web site. This may be specific to trade marks or more Intellectual Property matters. Important announcements are highlighted by way of a “Hot Topic” item.
c) Through the supply of data to commercial providers on a contractual basis
d) Via consultation exercises when statutorily required or when major changes are proposed.

III. Matters concerning classifying, reclassifying and indexing of trademark information

Classification and reclassification activities; Classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification (please indicate whether goods and services for the registration of marks and whether the figurative elements of marks are classified by your Office and, if so, which classification(s) is (are) used)

The UK uses the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) 8th Edition. Applicants are not obliged to use pre-defined terms but any terms which are not understood or which are unclear will be queried during the examination process. Classification terms which are deemed acceptable by our specialist Classification Team are collated and incorporated into a searchable guide which is available to our examiners and via our web site.

For figurative marks the UK uses a version of the Vienna classification system. For some marks a number of entries have been amalgamated and for others the classification does not go below the second level. The classification of figurative marks is undertaken by office staff at the time of application. Marks are scanned into the IBIS system and the Vienna classification allocated. This classification can subsequently be amended.

Use of electronic classification systems to check the classification symbols furnished by an applicant and which are contained in the lists of goods and/or services

No electronic classification systems are used to check the lists of goods and services provided by applicants.

Obligation for applicants to use pre-defined terms of the classification applied

There is no obligation for applicants to use pre-defined classification terms. General classification advice can be obtained from our central enquiry call centre. Specialised advice is available from our Classification Team who are available during office hours via e-mail, fax or telephone. As new terms are deemed acceptable they are added to our classification database and made available to examiners and via the Internet.

IV. Trademark manual search file establishment and upkeep

File Building

Trade mark applications can be made in paper form or electronically. Electronic filers can choose between a web based form or through a system established for larger filers entitled PaTraS.

All applications, however filed, are built into paper case files. Case files are kept in examination areas until the application is published for opposition. Once publication has been achieved the files are despatched to a dedicated off-site storage facility.

No manual search files are held.

Documentation from other offices maintained and/or considered part of the available search file

No external databases are used for trade mark search. Community trade mark information is downloaded using the OHIM XML data which is then passed to the search systems IBIS, Marksman and OPTICS via a reception system. For designations to OHIM under the Madrid Protocol to be introduced to our search systems XML files are downloaded from WIPO.

V. Activities in the field of computerized trademark search systems

In-house systems (online/offline)

Two systems are used for word searching. These are the Marksman system developed by the Swedish Patent Office which is the primary system used by trade mark examiners. Word searching can also be undertaken using the OPTICS mainframe system. Figurative searching is undertaken using the IBIS system. The statutory search undertaken covers UK national marks, designations to the UK made through the Madrid Protocol, OHIM marks and designations to OHIM made through the Madrid Protocol.

Developments are currently underway to allow Marksman word searches via IBIS producing an integrated figurative and word search system.

Administrative management systems (e.g., register, legal status, statistics, administrative support, etc.)

Management information is produced from the OPTICS, TMAD, IBIS and TERN systems. The TERN system produces statistics which identify the number of, and the results of the examination process. Records are kept of the number of objections taken on absolute and relative grounds.

Equipment used (hardware, including the types of terminal and network used, and software), carriers used

UK Trade Mark staff access all search systems via their networked PCs. The office will migrate to the Windows XP Professional operating system during the later half of 2005. During 2005 the UNIX servers used will also be upgraded and smaller servers will be linked to shared, high performance storage arrays over a Storage Area Network.

VI. Administration of trademark services available to the public (relating to facilities, e.g., for lodging applications, registering trademarks, assisting clients with search procedures, obtaining official publications and registry extracts)

Information services available to the public (including computerized services and search files contained in libraries remote from your Office and trademark information posted by your Office on the World Wide Web)

Trade mark applications may be made by post, fax, in person, electronically via the Internet or via the PaTraS system which allows customers to file directly by sending us an xml file or by means of an automatically generated e-mail.

Official trade mark publications are available via our web site or through our contact centre. Our website also gives access to legal decisions, examination practice and procedures including classification, pdf versions of all our forms with a range of these also available for submission electronically. All trade marks can be viewed via the Internet through a specific case enquiry function plus a search allows UK national, designations to the UK and OHIM and Community trade marks to be searched. This search will be updated later in 2005 to offer enhanced search options.

Our web site also offers an electronic caveat system which allows customers to be notified by e-mail of any changes to a selected trade mark without charge. This is also available as a paper based system with a charge being made.

The UK offer a commercial Search & Advisory service where customers can obtain advice on the registrability of a specific trade mark. General advice is also available via our Central Enquiry contact centre with more specialised advice being available from examination, classification and legal areas.

VII. Matters concerning mutual exchange of trademark documentation and information

International or regional cooperation in the exchange of trademark information, e.g., in the form of official gazettes

The UK national Trade Marks journal is available via the Patent Office web site. There is no ongoing programme of mutual exchange of trade mark documentation but any documentation is made available on request. The UK is an active member of an International Benchmarking club which is working on collaborative ventures.

VIII. Matters concerning education and training including technical assistance to developing countries

Promotional activities (seminars, exhibitions, visits, advertising, etc.)

Patent Office staff attend events, seminars and exhibitions throughout the United Kingdom. Our Marketing and Education section also undertake a wide range of activities designed to highlight trade marks.

Training courses for national and foreign participants