The UK Intellectual Property Office (UK IPO) has issued a consultation regarding the introduction of a new simplified, “fast track” opposition procedure for UK trademark applications, which would run alongside the existing opposition system. This system could come to fruition in October 2013.
The intention of the “fast track” opposition system is to encourage trademark owners to defend their existing UK trademark registrations, making the system less costly, less complex and quicker to reach a decision.
The “fast track” system would be available for use in trademark opposition proceedings, where earlier registered (not pending) rights are relied on relating to no more than two registrations. These grounds of opposition would be based upon Section 5(1) or (2) Trade Marks Act 1994, which cover identical or confusingly similar trademarks in respect of overlapping or similar goods or services.
In UK trademark oppositions involving unregistered “user” rights in the United Kingdom, pending UK trademark applications, bad faith, copyright or registered design right infringement, the “fast track” opposition procedure would not be available because these rights must be supported by evidence.
It is envisaged that the “fast track” opposition procedure would carry a lower opposition fee of between £50 – £100 and that, rather than an opponent having to file evidence of use of his trademark(s) (which is/are more than five years old) during the evidence stages of the opposition proceedings, that instead, this evidence of use would have to be filed at the same time as filing the notice of opposition in the form of a short witness statement. After the initial filing of the notice of opposition, as at present, the applicant will have a period of two months to file a counterstatement in defence of his application and if this is done, the parties will then each have an opportunity to make written submissions in support of their cases. If the applicant does not file a counterstatement, provided that the notice of opposition is based upon credible grounds, the opposition will be deemed successful and the later application refused.
Contrary to the present opposition procedure, it is proposed that no evidence will be admitted by either party, without leave being granted by the UK IPO and that a decision will be rendered on the papers filed (rather than by attendance at an oral hearing). This decision would still be subject to appeal.
It is very important to police and enforce your registered trademark rights to ensure that they are not diluted by the presence of conflicting trademarks on the UK trademark register and also, more broadly in the marketplace. If you become aware of an identical or very similar trademark in your product/market sector, prompt action must be taken. Invariably, this yields a more positive and cost effective outcome for the trademark owner. Whilst the UK IPO conducts a search of the UK trademark register when examining a new UK trademark application, it is highly advisable to supplement this with your own monitoring, for example, via a trademark watch. Trademark watches can be set up for the publication of conflicting trademarks or the registration of such domain names or company names. They generally run on an annual basis and extend UK, European or worldwide.
If you are interested in opposing a UK trademark application or setting up a trademark watch, please get in touch with the trademark team at Albright Patents LLP and they will be pleased to advise you.
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