Clients familiar with the process of applying for trade marks in the will be aware that all new applications are examined by the UK Intellectual Property Office (“UK IPO”) and may be refused on “absolute” and “relative” grounds.
A refusal on absolute grounds means that the trade mark is not thought to meet the legal criteria for registration for inherent legal reasons. A “relative” refusal indicates that that the UK IPO believes that the trade mark may conflict with one or more existing third party-owned trade mark registrations or applications (“prior rights”) on the basis of too much perceived similarity.
From 1st October 2007, the UK IPO will no longer refuse new trade mark applications on the basis of prior rights. This will put the burden on to prior rights owners to satisfy themselves that new applications are not in conflict with any of their own trade mark registrations or applications.
The UK IPO shall however send new applicants a copy of a search of the trade mark register showing relevant prior rights. This will give new applicants the option of withdrawing or restricting the scope of goods and services covered by the new trade mark to avoid conflict with such prior rights. If the applicant continues with the application nevertheless, the UK IPO shall inform the owners of the prior rights in question of the application at the time it is published for opposition purposes. Owners of prior rights which are Community Trade Marks will need to opt-in to this service upon payment of a fee.
Prior rights owners will continue to have the right to object to new applications which they may oppose when the applications are advertised if they consider them to be unduly similar. If no opposition is filed, the new application will be registered automatically. This will leave prior rights owners who did not take action at the opposition stage with the burden of commencing expensive and difficult invalidity proceedings.
Depending on which side of the fence you are on, there are advantages and disadvantages to the new system:
Because there is no longer an “official” rejection system, UK trade marks may be perceived to be less valid or resistant to challenge than trade marks in certain other jurisdictions.
Applicants for trade marks will be better off as their applications are less likely to fall at the first hurdle: if prior rights owners fail to take action following notification, new applications will automatically proceed to registration.
Prior rights owners will have the trouble and expense of having to respond rapidly to a notification in order to oppose the new application. Alternatively, they will need to set up an adequate “watching service” to enable them to identify new and conflicting applications as soon as they appear on the UK IPO’s register so that action may be taken as early as possible.
It will be interesting to see how much more trade mark litigation the changes will generate and whether there will be any other effects on the popularity of the trade mark application procedure.
For more information on any of the points raised, please contact Laurie Heizler.
First published September 2007
