Fast Track UK Trade Mark Opposition Procedure
On 01 October 2013, the UK Intellectual Property Office (UKIPO) launched a new fast track trade mark opposition procedure. The new streamlined procedure, which will run alongside the standard opposition route, has been introduced with a view to making UK oppositions more appealing to prospective opponents, enabling them to be more proactive in enforcing their rights, more quickly and at a reduced cost.
Fast track opposition – key facts
- The official filing fee has been reduced to £100.
- The scope of a fast track opposition is limited to claims of identity between the trade marks and the goods/services (Section 5(1) Trade Marks Act ’94 (TMA)), and likelihood of confusion (Section 5(2) TMA) only. This means that if you want to rely on claims of unfair advantage or detriment (under Section 5(3) TMA) or passing off (under Section 5(4) TMA), for example, you will be unable to use the fast track opposition procedure.
- It is only possible to rely on a maximum of three registered or protected earlier rights only. If a party wishes to rely on more than three earlier rights, or on a pending application, they will need to follow the standard opposition procedure.
- Proof of use evidence required for any earlier mark relied on that is more than five years old at the time of publication of the opposed application must be provided at the time the fast track opposition is filed (as compared to during the evidence stages of a standard opposition).
- There are no formal evidence rounds in a fast track opposition. The parties may request leave to file additional evidence during the course of the proceedings, but leave will only be granted in exceptional circumstances.
- Whilst oral hearings will still be possible, there is a preference within the UKIPO that decisions in fast track oppositions should be decided from the written submissions filed by the parties, with oral hearings only being granted if really necessary. If a request for an oral hearing is granted, the hearing will most likely take the form of a teleconference without the need for skeleton arguments.
- A decision on the matter is anticipated to be received within six months, compared to the average 12 months for a standard opposition.
These will continue to be used for any opposition on grounds other than those under Sections 5(1) or 5(2) TMA, or where the opponent wishes to rely on pending applications or more than three registered trade marks. In addition, the official filing fee for filing a standard opposition that relies solely on Sections 5(1) or 5(2) TMA, will also be reduced to £100 so that parties wishing to rely on these grounds but who want to use the standard opposition procedure, are not subject to a cost disadvantage. Where grounds other than Section 5(1) or 5(2) are involved however, the usual official filing fee of £200 will still apply.
For the first time, an official fee for filing an appeal to the Appointed Person in inter-partes disputes of £250 will be introduced. This is with a view to ensuring that any appeals that are fi led are well founded and have at least a reasonable chance of success.
The new simplified fast track opposition procedure is likely to be welcomed by both brand holders and attorneys alike.
A growing number of oppositions are decided purely on the basis of the similarity of the trade marks and the goods and services in question, and only a small handful of cases really require extensive evidence. However, over time, practice has evolved with the result that parties generally file lots of unnecessary evidence in support of their positions which, in turn, increases the costs for trade mark owners and results in a delay in proceedings being concluded.
The new procedure provides parties with the opportunity to really assess the strength of their case and, if appropriate, to choose the fast track procedure to have the merits of the case decided within a relatively quick period of time, at a fraction of the costs for standard oppositions.
It will be interesting to see how popular the new fast track procedure becomes with trade mark holders, and the extent to which the new simplified procedure is used by businesses and individuals to enforce and protect their rights.