From 1 October 2008 the Trade Mark Rules 2000 will be replaced with the Trade Mark Rules 2008. The Intellectual Property Office hopes that the new rules will modernise and consolidate existing trade mark laws making them more accessible.

The most significant change relates to the opposition period when a third party may oppose the registration of a trade mark. The new rules will change the opposition period from a fixed three-month period to two months. This will mean that the 90% of applications which currently proceed without opposition will go through to registration much quicker. Unopposed trade mark applications will be registered one month earlier than what they currently are.

This change when combined with the optional fast track service introduced by the Intellectual Property Office (IPO) in April of this year could make a real difference to the time it takes to get from application to registration. The fast track service allows applicants to pay an additional fee of £300 for the application to be examined and the examination report sent out within 10 working days. If this optional service for examination is not used this process can take around a month.

Although the opposition period has been reduced, all is not lost for potential opponents. They will have the opportunity to extend the period to three months by completing a form online with no fee. The UK IPO will automatically extend the period by a further month if the opponent makes the necessary request before the end of the two month opposition period.

After an opposition to registration has been filed, the current legislation provides for a cooling off period of 12 months for the parties to negotiate a resolution. Many cases are resolved in this period. The new rules will reduce the 12-month cooling off period to nine months. However, there will be an option of extending the period to 18 months if both parties request it and make certain statements.

The new rules will specify a period of two months as opposed to three months for filing counterstatements. The Registrar will have wider powers when the changes come into effect, e.g. the power to set a timetable for the parties to file evidence, giving preliminary indications, case management and other areas of opposition and invalidation.

The reduction in the time for filing oppositions and counterstatements means that trade mark owners will have to be more vigilant in protecting their marks. It will be vital that owners respond promptly and put brand-monitoring strategies in place to keep track of conflicting marks.

This information is for guidance purposes only and should not be regarded as a substitute for taking legal advice.