Fast Track Trade Mark Opposition Procedure in the UK

With a reduced official filing fee of £100, opponents will be able to file a simple opposition and expect to have a decision on the matter received within 6 months (compared to the average 12 months for a standard opposition). The scope of a fast track opposition will be limited to claims of identity between the trade marks and the goods/services (Section 5(1) TMA ’94), and likelihood of confusion (Section 5(2) TMA ’94) and to a maximum of 3 registered or protected earlier rights only. If opponents want to rely on claims of unfair advantage or detriment (under Section 5(3) TMA ’94) or passing off (under Section 5(4) TMA ’94), or any other usual ground for opposition, or on more than 3 earlier rights, or on a pending application, they will need to follow the standard opposition procedure.

Other key differences between a standard opposition and the new fast track procedure include:

• a requirement that proof of use for any earlier mark relied on, that is more than 5 years old at the time of publication of the opposed application, must be provided at the time the fast track opposition is filed.
• the removal of formal evidence rounds (The parties can request leave to file additional evidence during the course of the proceedings, but leave will only be granted in exceptional circumstances).
• a preference that decisions in the oppositions be decided from the written submissions filed by the parties with oral hearings only being granted if really necessary. If a request for a hearing is granted, the hearing will most likely take the form of a teleconference without the need for skeleton arguments beforehand.

In other changes, the official filing fee for filing a standard opposition that relies solely on Sections 5(1) or 5(2) TMA ‘94, will also be reduced to £100, and for the first time, an official fee for filing an appeal to the Appointed Person in inter partes disputes of £250 will be introduced in an effort to ensure that any appeals that are filed, are well founded and have at least a reasonable chance of success.

A formal practice note is to be issued within the next week or so, which will outline the new procedures in more detail. A full report on the new changes will therefore follow shortly.