UK: Relative Grounds: Important Changes At The UK IPO From 1st October

Last Updated: 27 September 2007
Article by Isabel Davies and Tom Scourfield

From 1 October 2007, the UK Intellectual Property Office (UKIPO) will no longer examine a trade mark application on relative grounds and the onus will be on proprietors of potentially conflicting marks to object to the mark. Owners of CTMs and certain Madrid Protocol registrations may ‘opt in’ to the notification system of the UKIPO to receive details of applications for potentially conflicting marks automatically.

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From 1 October 2007, the UK Intellectual Property Office (UKIPO) will no longer examine a trade mark application on relative grounds and the onus will be on proprietors of potentially conflicting marks to object to the mark. Owners of CTMs and certain Madrid Protocol registrations may ‘opt in’ to the notification system of the UKIPO to receive details of applications for potentially conflicting marks automatically.

An Overview Of The Changes

Currently, the UKIPO consider applications on both absolute and relative grounds, so an application will not be registered if it is identical with or confusingly similar to an earlier mark.

Under the new system to be implemented from 1 October 2007, the Registrar will continue to undertake searches of the registers as part of the examination process for each new application, but merely inform the applicant of the search results and any potentially conflicting earlier trade marks. It is then the applicant’s choice whether to withdraw the application or proceed despite the risk of conflict. However, an application will automatically proceed to publication unless withdrawn by the applicant.

Provided there are no other objections to registration, there is a two month period between issuing the examination report and accepting the application and arranging for its publication, during which it can be amended or withdrawn.

If and when the application proceeds to publication in the Official Trade Marks Journal, the owners of any relevant conflicting marks will be notified (provided they are entitled to automatic notification or have opted in). A three month window in which proprietors of an earlier mark may oppose conflicting applications will begin on the date of publication.

This ‘search and notify’ role will align the UK trade mark application process with the Community Trade Mark (CTM) application system, whereby the European Community Trade Mark Office (OHIM) inform applicants of potential conflicts with existing trade marks and notify proprietors of the application. In particular, proprietors of earlier CTMs are notified by OHIM following their searches, but proprietors of national marks are not.

The ‘Opt In’ Procedure

Following the changes, proprietors of UK trade marks will automatically be notified of conflicting trade marks. As marks registered or protected in the UK already contribute to the cost of operating the UK registration system, proprietors are exempt from payment of a fee. In contrast, proprietors of CTMs are required to ‘opt in’ to receive such notifications, as they cannot be presumed to have a specific interest in the UK market.

Proprietors of International Registrations under the Madrid Protocol designating the UK (‘Madrid UK’) will automatically receive notifications, while proprietors of International Registrations designating the EU (‘Madrid EU’) will also be required to ‘opt in’.

To ‘opt in’, a trade mark owner (or their representative) must complete Form TM6, available online only via the UKIPO website (www.ipo.gov.uk), and pay a fee of GBP £50 per CTM/Madrid EU mark, which lasts for three years.

Form TM6 will be available to file on-line from 1 October 2007. The UKIPO anticipate a high level of demand for the service on its first day of availability. In response, they have confirmed that any requests filed and processed by 20 October 2007 will be eligible to receive notifications in respect of the first applications published for opposition purposes under the new system in Journal 6707 on 26 October 2007.

Proprietors of UK and Madrid UK trade marks who do not wish to receive notifications of later conflicting marks will be able to ‘opt out’ of the system. Similarly, it will also be possible for CTM and Madrid EU proprietors who have ‘opted in’ to change their mind and ‘opt out’. In each case, the request must be delivered to the UKIPO in writing. There will be no fee payable for opting out, but should CTM or Madrid EU proprietors later elect to opt back in they will be required to re-submit Form TM6 and the fee (no fee is payable for proprietors of UK and Madrid UK trade marks who choose to opt back in).

Taking Control Of Conflicts

Prior to 1 October 2007, the UK trade mark application process did a lot of the hard work for brand owners by requiring applicants to amend applications to remove any identical goods/services or obtain consent from the proprietors of earlier marks. The changes to take effect from 1 October 2007 will largely remove this hurdle of the application procedure and will also require trade mark owners to undertake a more active role to prevent conflicting trade marks being registered.

Proprietors of registered trade marks may wish to assess their position in light of the changes, particularly whether or not to opt in to the notification system. As UK and Madrid UK trade mark owners will automatically receive notifications without payment of a fee, they may wish to consider the performance of the system once it is established before deciding how to proceed. Owners of CTMs or Madrid EU marks however, must determine whether they wish to opt in to the notification system, bearing in mind the costs and benefits of the scheme.

The UKIPO are yet to issue guidance regarding how quickly notifications will be sent to existing trade mark owners. Potentially, there may be concerns regarding the actual delivery of such notifications, for example, if a trade mark has been assigned. If a proprietor or their address for service changes, postal notifications will be re-directed as soon as the UKIPO records are updated. If the original proprietor asks to be notified via e-mail, the new proprietor will have to inform the UKIPO of any new e-mail address they wish notifications to be sent to. These administrative details raise the possibility of delays occurring in the notification process, which may increase the risk of trade mark proprietors failing to learn of a potentially conflicting new application until the three month deadline to oppose it has passed.

What Will The Changes Mean In Practice?

Most brand owners will already subscribe to a trade mark watching service to ensure that applications for potentially conflicting marks are identified promptly, allowing the maximum time to consider commercial and legal strategy for any opposition. Since the new system is untested and may take some time to settle in, it will be even more important to have a monitoring system independent of the UKIPO, which could well be flooded by more applications than expected. For any organisation considering a watching service for its portfolio, we have worked with a number of clients to advise on and implement an appropriate scheme.

A new issue to consider for the opt in system is what message participation (or not) in the scheme will convey to applicants of potentially conflicting marks, since it will be possible to find out whether or not a particular mark has opted in. Some may suggest that a failure to enforce rights upon notification may give the application a mistaken impression that the conflict is not taken seriously, or there will be no difficulty with the mark being used in practice. We would advise that opting in to the system is a strong message showing that a proprietor is seriously monitoring their trade mark rights. For the amount in question, our advice would be to use the new system and opt in, at least for key marks, to see how it works in practice. However, this should still be supplemented by a watching service, at least until the system has established itself.

Finally, the change to procedure in the UK will eventually affect the perception of UK registrations in relation to clearance work. Previously, where a clearance search disclosed a potentially conflicting mark, the difference between a CTM and a UK mark was significant. In our experience, greater weight would be placed upon the validity of a UK mark, since it would have undergone both absolute and relative grounds checks by the Registry. By comparison, a CTM was not necessarily valid as an objection on relative grounds could only be brought by the proprietor, who may have elected not to enforce their rights. Now that the UK has aligned its practice with OHIM, the validity of new UK marks disclosed in clearance searches will be open to greater debate.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 26/09/2007.

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