Each year the UKIPO publish facts and figures relating to the trade mark, patent and design filings of the previous calendar year. We have provided previous reports for TM activity 2021 and 2022. The UKIPO recently shared the figures for 2023 with us, and there are some intriguing patterns emerging - especially as regards examination of new TM applications. This reinforces the value of putting in place trade mark watching subscriptions so that brand owners are alerted to the filing of new, conflicting, TM applications. It also appears that, where oppositions are filed, in 75% of cases they either they go undefended or an amicable settlement is reached by the parties. This suggests a well-targeted and strategic approach to opposition filings should yield positive results for earlier TM owners.
Overall, there was a slight increase in TM filings from 2022, as 2023 witnessed the second highest number of new TM applications filed. The number of oppositions to trade mark applications also remained notably high. The UKIPO TM tribunal division has been extremely busy of late, with officially reported delays in the scheduling of hearings and issuing of decisions in oppositions and cancellation actions.
We discuss the key issues of the 2023 data below, with advice for what brand owners should do in light of these national trends.
Contents
- Filings are on the rise again
- Third highest year for TM registrations
- Citations in official searches and resulting notifications
- Threatened oppositions
- Formal oppositions
- Negotiations
- Summary
1. Filings are on the rise again
In the years running up to 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 up to 2021 was a record filing year.
2022 however saw a 19% fall from 2021’s record high, with the total number of filings dropping to 158,821. This may have been a sizeable step down in filings, but it is important to note that it was still comfortably the 2nd highest filing year.
2023 saw 163,726 applications filed during the calendar year. This may represent only a slight (~3%) increase on 2022’s figures, however it is still approximately double the number of applications filed in 2017.
Total Applications Filed Per Calendar Year
The UKIPO have commented on these trends in recent years, attributing the previous surge in 2020 and 2021 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.
Looking at 2023 in particular, the UKIPO have confirmed that:
- 85,845 trade mark applications were filed directly with the UK IPO (domestic applications) from UK-based applicants, which represents an increase of 7.3% compared to 2022.
- 46,121 direct applications to the IPO were from non-UK-based applicants, which is a 4.5% increase from 2022.
- 31,759 trade mark applications were made through the International Registration (IR) route, an 8.5% decrease from 2022.
It is interesting to note that direct national applications were a more popular filing method for non-UK-based applicants than designating the UK under international registrations.
2. Third highest year for TM registrations
2023 saw 143,513 UKTM applications reach registration.
Looking back, and as can be seen on our graph, 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.
As we had anticipated last year, there has been 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.
3. 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. The numbers show there has been a decrease in the number of times the UKIPO is issuing notifications, which reinforces the value of putting in place TM watching measures for brand owners to prevent conflicting TM applications from reaching registration.
In 2023 the number of applications in which the official search cited at least one earlier conflicting trade mark was 28,026. This is the lowest figure in the period 2019 – 2023 inclusive, which is somewhat surprising following on from back to back years of record high filing rates.
Roughly speaking¹, around 28% of filings in 2019 received at least one citation during the UKIPO Examiner’s search report, however only ~17% of filings received at least one citation in 2023.
This is particularly interesting when considered alongside the figures for ‘average number of citations raised per application in which at least 1 citation was raised’ - as this appears to be creeping upwards. While in 2019 the average number of citations per application in which at least 1 citation was raised was 3.8, this has grown slowly over the years to an average of 4.2 in 2023.
In short, the trend appears to be that fewer applications are receiving citations in their search report but, where citations are raised, you are likely to receive more citations. This means that unless TM owners have a TM watching subscription in place there is a greater risk than in previous years that third party TM applications could proceed to registration without earlier TM owners being notified. 
4. 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, and this figure remained high in 2023.
- In 2020 only 7,466 eTM7As were filed
- In 2021, the number of filed eTM7As shot up, rising by 87% year on year to reach 13,978.
- The total number of eTM7As filed in 2022 dropped slightly to 13,108.
- 10,725 eTM7As were filed in 2023. This is a drop from 2022, but still significantly higher than the pre-pandemic high of 8,016 filings in 2019.
As noted above, an application filed one year may not receive an eTM7A until the following year. Nonetheless, loosely comparing filing figures and threatened oppositions in 2022 and 2023 suggests that the proportion of filings to receive a threat of opposition has stayed level at around ~7-8%.
5. Formal oppositions
The number of oppositions (TM7s) served in 2023 was 7,814 – this was lower than 2022’s peak of 9,529, but still remained high.
The annual number of oppositions served at the UKIPO more than doubled from 2019 to 2022. This will primarily be a consequence of the growth of the UKTM Register outlined above, and follows the bumper filing years of 2020 and 2021. The slight decline in oppositions served in 2023 as compared to 2022 appears to align with the lower number of UKTM applications filed since 2021’s peak.
Interestingly, around 75% of UKTM oppositions that closed in 2023 concluded without the filing of a Form TM8 (Notice of Applicant’s Defence and Counterstatement). Oppositions will conclude in this way if the application or opposition is withdrawn (perhaps following amicable settlement between the parties), or if the Applicant simply fails to file their defence and form TM8 by their deadline.
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6. 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 recent years, but the requests to enter cooling-off periods have risen accordingly too. The number of requests to enter the cooling-off period in 2023 nearly doubled from 2019’s figures, tracking with the increased number of oppositions served in that time.
TM9C cooling off requests were accepted by the UKIPO in approximately 26% of the 2023’s served oppositions, which is comparable with levels for recent years - except for 2021 where notably only 19% of oppositions sought cooling off.
This seems to suggest that while the number of oppositions has broadly risen in line with the number of UKTM applications, earlier trade mark owners and applicants remain willing to pursue amicable settlement of oppositions where possible.
7. Summary
- New trade mark application filings rose in 2023 as compared to 2022
- Numbers of oppositions have remained high in 2023, a product of historically high application numbers in recent years
- A smaller proportion of applications are receiving any citations during the Examiner’s search report – but those that do receive any citations are receiving more hits.
- ~75% of trade mark oppositions filed at the UKIPO in 2023 were either settled or won by default (i.e. proceedings concluded without the filing of the Applicant’s defence).
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.
Oppose applications where later filed TM applications are of concern
The numbers suggest that of all oppositions closed, 75% are concluded either by amicable settlement or in favour of the opponent by default (where the applicant does not file a defence). This suggests opposition is often worthwhile and may achieve a positive outcome in most cases for the opponent/earlier brand owner either through an amicable settlement which provides assurance that the risk of conflict in the marketplace is avoided, or through abandonment of the application by the applicant.
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.
Marks & Clerk has one of the largest portfolios of UK TMs under management and one of the biggest teams of trade mark specialist advisors in the UK so is uniquely placed to help brand owners navigate the trade mark landscape in the UK.
¹ Applications filed in one calendar year may not be examined and receive their search report within the same calendar year if e.g. filed late in the calendar year.
