Following concerns about the time and cost burdens of trade mark oppositions, 1st October 2013 saw the IPO introduce a new fast track opposition procedure. This is intended to provide greater access to opposition proceedings through reduced costs and complexity. It is also designed to prevent lengthy oppositions.
The new fast track opposition procedure has been introduced as an alternative to the standard procedure and will only be available in certain simpler oppositions. The new procedure works initially in the same way as the standard procedure - once an application for a trade mark has been made, this will be advertised so that anyone can oppose registration within 2 months. As with the standard opposition, this period can be extended to 3 months. It is at this stage that the two procedures differ and a party wishing to oppose can choose to either file a standard opposition or lodge a fast track opposition along with the requisite £100 fee.
The option to utilise the fast track opposition procedure is only available to oppositions based on section 5(1) and/or 5(2) of the Trade Marks Act 1994, namely that there is/are earlier identical mark(s) protected for identical goods/services, earlier identical mark(s) protected for similar goods/services, or earlier similar mark(s) protected for similar goods/services. Moreover the fast track opposition procedure limits the number of earlier marks which can be relied upon to just three. If the opponent is seeking to rely on trade mark rights that have been registered for more than 5 years, they are obliged to submit proof of use at the time of filing the notice of opposition.
Once a fast track opposition has been made, the IPO will serve this on the applicant who will then have a period of 2 months within which to file their notice of defence. Should no defence be filed, the opposition will succeed. Alternatively there is an option to enter into a cooling-off period and attempt to resolve the dispute by means of negotiation. Should the applicant choose to file a defence, however, this will be served on the opponent. In the standard procedure the hearing officer would then proceed to decide whether an oral hearing is necessary and parties could choose to file further evidence. However when using the fast track procedure, this will very rarely be the case. Should a hearing be requested and granted, there will be an option for this to be done by teleconference and leave must be obtained to file further evidence. Moreover should the opposition prove unsuitable or too complex for the fast-track procedure for any reason it will simply revert to a standard opposition, with the additional fees this would incur becoming due. Should the fast track opposition procedure continue though, a decision will be made (normally on the papers). Whilst there will be an opportunity to appeal any decision made within 28 days, this will be subject to a £250 fee.
General feedback to the new procedure thus far has proved mixed. Whilst many agree that the intention for a cheaper alternative opposition procedure has been met to some extent, it is feared that the fee applicable to the right of appeal favours the wealthier party and therefore conflicts with the intended aim of justice for smaller companies and individuals. Moreover the requirement to submit proof of use of trade marks which are over 5 years old and which are being relied upon at such an early stage in the proceedings will likely seem unattainable to many smaller companies or individuals who lack the essential resources. Anyone looking to oppose a trade mark application is advised to seek legal advice.
Disclaimer
The material contained in this article is of the nature of general comment only and does not give advice on any particular matter. Recipients should not act on the basis of the information in this e-update without taking appropriate professional advice upon their own particular circumstances.
