Before 2007, when a trade mark application was made to the UK Intellectual Property Office (IPO), the Registrar of Trade Marks could ex officio refuse registration on the basis of a previous trade mark.
Following the a change in the law, the onus was placed on owners of earlier marks to oppose the registration of new marks. At the same time a cooling off period after filing of opposition was introduced to allow negotiated settlement and the opposition period was shortened from 3 to 2 months
Prior to the legal change in 2007, 27% of applications faced official objections from the Registrar because of conflicting earlier marks. 7.5% of applications were finally and wholly refused on these grounds. Today, 42% of applications are the subject of notifications to owners of earlier marks but the opposition rate is only 4.5%. There are likely to be a range of reasons for the difference. These will include:
- A potential opponent’s business no longer exists, or the part of the business related to the earlier mark no longer exists.
- They perceive no likelihood of actual conflict in the market place because the parties are in different market and/or geographical sectors.
- They do not share the examiner’s view that the marks are too similar to avoid confusion.
- The earlier mark has not been used in the previous 5 years, or has not been used for the registered goods/services that conflict with those covered by the later mark, and the earlier mark is therefore legally unenforceable.
- The parties already have a co-existence agreement.
However, there is concern that the decrease in the numbers of oppositions may also be due to a fear of the financial and time impact this may have for SMEs.
In an attempt to address this issue the IPO has recently been conducting a consultation for some proposals for the introduction of a fast track opposition procedure.
A fast track opposition process might differ from the existing opposition procedures in the following ways.
- Lower opposition fee
- Grounds limited to s.5(1)/5(2)
- Limit to the number of earlier marks that can be relied upon
- If over 5 years old, proof of use to be filed with the notice of opposition using a pro-forma statement with exhibits
- Leave required for either party to file any further evidence
- Decisions normally from the papers
- Introduction of refundable appeal fee large enough to discourage frivolous appeals
The consultation period ended on 17th May and we will report on their findings and any decisions that are made.
For more information see the IPO website at – http://www.ipo.gov.uk/pro-policy/consult/consult-live/consult-2013-tmfasttrack.htm
Consultation document – http://www.ipo.gov.uk/consult-2013-tmfasttrack.pdf
James Sanderson, Senior Partner at Sanderson & Co says, “These proposals, if introduced, will provide a convenient simplified framework for opposition in some circumstances. However there are many situations where the changes will not be to an opponent’s advantage (and may actually increase initial costs) and the current process may still need to be followed. The practical implications on a strategy for defending one’s trade marks can be assessed once the results of the consultation are known.”
For advice on trade mark applications or on opposing them please contact us.