Trade Mark Newsletter Special Edition

Trade Mark Office Practice Changes on October 1st 2007

From October 2007 the UK becomes the first common law country worldwide to do away with relative grounds refusal.

If you own UK or CTM registrations or file applications in the United Kingdom, these changes will affect you in the following ways: -

FOR APPLICANTS
A faster, more streamlined application process with earlier rights no longer forming the basis of objections during the examination process.

FOR BRAND OWNERS
A requirement to set up and/or review their watching services and decide if they want to opt into the new notification system operated by the Trade Marks Office in the UK.

IF YOU ARE AN APPLICANT
Applications filed after October 1st 2007 will be examined only on absolute grounds. That is to say, is the mark inherently distinctive? This will be the only basis on which the Trade Mark Office can raise a formal objection to the registration of a mark.

The Trade Mark Office will continue to examine for relative grounds (earlier marks). A search will be made of UK and CTM Registrations and Applications; however, the Office will no longer refuse to register a trade mark on the basis that it conflicts with an earlier right. The Trade Mark Office will continue to issue an examination report identifying any potential conflicting marks as well as any other objections such as whether the mark is inherently distinctive or if the specification requires amendment.

Applicants will have two months to respond to the examination report. If the only issue raised is that the search has revealed earlier marks which apparently conflict, Applicants will be given the opportunity to decide whether or not they want their application to proceed to publication. If no response is lodged within two months the Office will automatically progress the application to acceptance and publication for opposition purposes.

This two month period can be extended if there are good reasons, for example, if consent is sought from the proprietor of an earlier mark which has been listed in the examination report. Applicants will have the opportunity to respond to the list of potentially conflicting remarks. The Office has confirmed though that they will not enter into written correspondence about avoiding notifications where there are speculative or conditional proposals. Applicants and their representatives will be offered one round of submissions. It will be permissible therefore to argue that trade mark X is not likely to be confused with Y for the following reasons and therefore there is no need to notify the owner of the earlier right, but if the Office disagrees, the Applicant wishes to limit the specification by deleting the following goods/services before publication. The Office has also indicated that Examiners will be prepared to discuss enquiries over the telephone before any formal response is made to the examination report.

Applicants and their representatives should note that they will only have one opportunity to file submissions with the Trade Mark Office so it is important that all of the issues relating to earlier marks are addressed in full.

Assuming the application proceeds to publication the Trade Mark Office will automatically notify proprietors or their representatives of earlier UK national marks identified in the search and the owners or the representatives of International Registrations which are specifically protected in the United Kingdom. They will also notify the owners or the representatives of any conflicting Community Trade Marks or International Registrations protected in the EU as a whole, but only if they have opted in to receive such notifications. For further details on opting in see the next page. We will be able to tell whether the owners of such marks have opted in from information provided by the Trade Mark Office.

An Applicant who wishes to proceed with an application where various earlier marks have been listed in the examination report, either limiting the specification of goods/services or seeking consent are two ways of reducing the risk of an opposition being filed.

Applicants do not have any right to appeal against an Examiner’s decision to notify the owners of earlier marks. Nor will it be possible to request a Hearing to argue against the issuing of a notification to an earlier rights holder.

In the event that your mark is not opposed it is possible that at a future date the owner of an earlier right might apply to have your trade mark declared invalid. They will, however, lose this right if they become aware of use of your trade mark in the UK market for a continuous period of five years following registration and fail to take any action to object to your use.

Applicants should note that whilst the UK has for many years been one of the quickest Trade Mark Offices in terms of their examination procedure amongst common law countries, this change in practice should speed up the process even further. In addition, with only formal objections being raised on absolute grounds it is anticipated that the application process will become easier to complete and therefore, lead to a reduction in the costs associated with securing trade mark protection in the UK.

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IF YOU ARE AN OWNER OF AN EARLIER RIGHT
The extent to which these changes will affect you depends on the nature of your earlier rights.

UK Registrations and IR’s Designating the UK
Owners of UK (only) rights will automatically be notified or via their representative with regard to any later filed conflicting marks.

CTM’s and IR’s Designating the EU
Owners of Community Trade Marks and International Registrations designating the European Union will only receive notifications if they opt in. This can be done by instructing us whereupon we will complete the relevant official form. The official fee for this form is £50 per mark, and will be valid for a period of three years.

D Young & Co as a service to our clients will not be making any charge for the filing of this form. We will, however, make a nominal charge for reporting subsequent notifications to you.

The Trade Mark Office have indicated that even if owners of CTM’s have a seniority claim which has been accepted based upon an earlier UK Registration which has subsequently been allowed to lapse, it will still be necessary for them to opt in if they wish to receive notifications.

Owners of earlier rights will no longer be able to rely on the Trade Mark Office to object to and reject later applications for confusingly similar marks. The onus now lies with the owners of earlier rights to police the protection of their own marks against subsequent applications. The most effective way of doing this is by subscribing to a trade mark watching service to ensure that you are notified of any later conflicting marks. We have set up and operate watching services for the majority of our clients and would be happy to discuss this further, should you so wish.

It is anticipated that the first applications published for opposition purposes under the new practice will take place on 26th October 2007. As it is anticipated that a great many brand owners will wish to opt in from the beginning of October, we will guarantee that if you can let us have your instructions no later than October 10th, we will ensure that requests to opt in will be processed so that you will be eligible to receive notifications in respect of the first applications published under the new system.

Some clients who already have sophisticated watching systems in place may decide that they do not wish to be notified of any subsequent conflicting marks on the basis of their earlier UK Registrations. The Trade Mark Office is therefore accepting requests to opt out of the notification system. If this is something you would like to discuss, please contact your usual D Young & Co Attorney.

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