From 1 October 2007 the UK Intellectual Property Office (UKIPO)1 will no longer automatically refuse to register a new mark where it conflicts with an earlier mark already on the Trade Marks Register. Instead it will notify both the applicant so that they can decide whether to proceed and the owner of any earlier conflicting mark of the conflict so that they can oppose the application if they see fit. However, owners of earlier Community trade marks (and certain International marks) will only be notified if they have "opted-in" by payment of a set fee per mark.
At present the UK Intellectual Property Office examines an application for a trade mark on absolute grounds for refusal of registration (e.g. whether it is distinctive and capable of distinguishing the applicant's goods and services from another's) and on relative grounds (whether an earlier conflicting mark is already registered). The examination on relative grounds involves searching the Trade Marks Register for any earlier marks that:-
- are identical to the mark for which registration is sought and are registered for identical goods and services;
- are not completely identical but only similar to the mark for which registration is sought in terms of the mark itself and/or the goods and services to be covered and where, because of that similarity, there would be a likelihood of confusion on the part of the public if the new mark were registered.
In refusing registration on relative grounds the UKIPO is out of step with the European registry, OHIM2. A change in the UKIPO's examination rules has therefore been long anticipated in order to make its practice more consistent and competitive with OHIM's.
From 1 October 2007, the UKIPO will still conduct searches for earlier identical or similar marks but, instead of that leading to a refusal to register the new mark, the UKIPO will inform the applicant of the search results. The applicant will then have 2 months in which to decide whether to continue with the application, perhaps restricting the list of goods and services to avoid the conflict or by seeking consent to registration from the owner of the earlier mark, or to abandon it.
If the applicant decides to continue, the UKIPO will publish the application and at the same time inform the owners of the earlier marks (unless the applicant can persuade the examiner that no conflict in fact exists or that the conflict has been removed by restricting the goods or services covered).
The need to "opt-in"
While owners of earlier UK trade marks and International trade marks designating the UK will be notified automatically, owners of earlier Community trade marks and International marks designating the EU as a whole will only be notified if they have first opted into the notification scheme by filing the appropriate form and paying a fee of £50 per mark. Each "opt-in" is valid for 3 years.
Once notified, the onus is on the owner of the earlier mark to oppose the application, within 3 months of the publication date, if it considers that the use of the new mark would infringe its rights. Other grounds of opposition (e.g. lack of distinctiveness of the new mark) can also be raised. If successful, the opposition will prevent the application from being registered.
As well as bringing UKIPO practice on examination closer to OHIM's, the changes in the rules will benefit applicants by simplifying the examination procedure. On the other hand, it will increase the number of oppositions and so the costs of some applications.
The costs for trade mark owners of policing their portfolios will also rise as they will no longer be able to rely on the UKIPO for an initial weeding out of conflicting applications. They can therefore anticipate having to bring more oppositions for which, even if successful, they are unlikely to recover their full costs. Trade mark owners will also need to review their portfolios for Community marks and International marks designating the EU for those that are used in the UK so that they can opt-in to the notification system - especially if they do not have a watch service already in place. If they don't opt-in, and miss the opposition period for an application, owners risk finding their rights infringed, their marks diluted and potentially needing to bring more expensive revocation and/or infringement proceedings against the applicant in order to regain their marks' exclusivity.
1 Formerly the Patent Office (it changed its name on 1 April 2007)
2 Office for Harmonization in the Internal Market (Trade Marks and Designs)
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.