From 1 October 2007, the examination procedures at the United Kingdom Trade Mark Registry have changed. This Hot Topic considers these changes and the effect they will have.

Since 1938, trade mark applications in the United Kingdom have been examined to determine whether they conflict with earlier trade mark rights. All new trade mark applications have been searched against all earlier marks, including national marks, Community Trade Marks or International registrations that designate the UK. If the Examiner considered that a conflict existed, an objection would be raised and the trade mark application would be refused. In this way the Registry was effectively policing your trade marks to prevent third parties acquiring conflicting rights.

The UK Registry is now going to adopt a search and notify procedure. They will still conduct a search of earlier marks, but if they identify a conflicting earlier right they will no longer raise an objection, but they will notify the applicant of the results of the search. If the applicant elects to proceed, The Registry will automatically notify the proprietors (or their representatives) of earlier UK national trade marks identified in the search, and the owners of any International registrations which designate the UK as a national designation.

However, the owners of any conflicting European Community marks (including any International marks protected in the EU as a whole) will only be notified if they have opted-in to receive such notifications.

Once notified, it will then be the responsibility of the owners of those earlier rights to oppose any application which conflicts with their interests. In this way, the Registry is no longer policing the Register for trade mark owners.

It is now more important than ever for owners of trade marks to have trade mark watches in place, so that they are aware of potentially conflicting applications and have an opportunity to oppose. If relevant owners do not opt-in, they will not receive any notification from the Registry of later applications which may conflict with their earlier Community trade mark right, and may lose the opportunity to oppose.

What should you be considering?

  • Do you want to apply for registration of a UK trade mark?

    It should now be easier to register trade marks in the UK. Marks which have been refused previously due to conflict with earlier rights will now only be refused if there is a successful opposition by the holder of the earlier right.

  • Have you had a trade mark refused by the Registry during examination or has your registration been restricted because of a conflict with an earlier right?

    • You should consider filing a new application as it may now be successful. However, you should be aware of infringement problems before using the mark.

  • Do you own European Community applications and/or registrations?

    • You should "opt-in" to receive UK IPO notifications. The initial "opt-in" period is 3 years and the cost for us to set this up for you will be £100+VAT per mark for 3 years.
  • Should I set up a trade mark watch for my more important marks?

    • if you have trade marks outside the UK, it may be more cost-effective to set up a worldwide watch to keep you advised of attempts to register conflicting third party marks than to take steps to monitor the UK position alone.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.