September 2007
The UK Intellectual Property Office (formerly known as the UK Patent Office / UK Trade Marks Registry) will soon be making significant changes to the way it examines British trade mark applications.
From 1 October 2007, the UK IPO will no longer refuse trade mark applications due to earlier conflicting marks with it instead being left to the owners of such marks to oppose applications which are thought to be of concern. This is the first important change.
Trade mark applications will, though, continue to be examined on the basis of 'absolute' grounds, meaning that objections will still be raised if the mark itself is not thought to be inherently registrable.
In more detail, although a search for conflicting earlier marks will continue to be carried out, and the results passed to the applicant, this will not be binding.
Rather, the applicant will be given two months to consider the search results and to decide whether to make any amendments to the application, to withdraw it or to proceed 'as is'.
If the applicant decides to proceed, with / without making any changes (and provided no other objections remain) the application will go forward to publication for opposition purposes, in the normal way.
This is where the second important difference will lie : at this stage, the examiner will automatically notify the proprietors of any earlier UK trade marks (or international marks designating the UK) which were listed in the search report, of the existence of the pending application.
Owners of any earlier Community Trade Marks (or international marks designating the Community Trade Marks Office), will not be notified in this way unless they have decided to "opt-in" to the new system (which involves filing an official form and the payment of a modest fee) unless of course they have a corresponding UK trade mark which has also been identified in the search.
As a result of these changes, owners of UK marks can no longer rely on the UK IPO to refuse new applications for conflicting marks on the basis of their earlier rights. Instead, it will be up to the owners of the earlier marks to oppose.
For trade mark applicants, these changes will have the advantage that applications are likely to meet with fewer objections at the examination stage, in contrast to the present system, which often leads to applications being delayed or refused on the basis of earlier marks which do not, perhaps, give rise to any actual risk of confusion, in practice.
However, careful consideration of the search report will be advisable given that if / when the application proceeds, the owners of any marks listed who receive "notice" may well file - or at least threaten to file - opposition.
For the owners of existing rights - be they UK, CTM or relevant international registrations - the new system will require increased vigilance and, in some cases, prompt action to prevent the registration of conflicting trade mark rights in the UK. In consequence, trade mark watches are thus likely to become more and more important for brand owners.
We, at Forresters, will be monitoring the new system closely, and will be happy to answer any questions which may arise. In addition, we will be pleased to discuss any 'watching' requirements with you, or indeed any other trade mark query - please feel free to contact us.