New Fast Track Opposition procedure for UK Trade Marks

New fast track opposition system for to UK trade marksFrom 1st October 2013 the UK Intellectual Property Office (UK IPO) is introducing a new Fast Track Opposition procedure for UK Trade Marks.  The aim is to simplify and speed up the trade mark opposition procedure and to reduce the associated cost implications. This should encourage SMEs and individuals to enforce their trade mark rights.

Why have these changes been introduced?

  • Businesses complained that using oppositions to protect their marks was too costly and time consuming
  • Government wants to enable IP owners to protect their own property
  • Legal costs were considered as prohibitive to SMEs and micro businesses who now account for a large proportion of TM owners
  • Many oppositions are essentially assessments of similarity between marks and goods/services

The new Fast Track process is an alternative to the existing opposition process that remains available and will be appropriate for more complicated disputes.

How will the fast track differ?

  • It will have a £100 opposition fee which is lower than the current fee.
  • It is limited to s.5(1)/5(2) grounds ie those where it is a simple comparison to a prior registered trade mark.
  • It may be based on no more than three earlier registered or protected marks 9not pending applications)
  • If the prior marks are over 5 years old, proof of use must be filed up front
  • No further evidence may be included with permission
  • A decisions will normally be made from the papers without any hearing

What will this mean for trade mark holders?

The new system provides a potentially cheaper and quicker forum for decisions on simple UK cases, but will not be appropriate in all cases, especially due to the need to put evidence of use in at the outset.  It will apply to all UK trade marks but the onus remains on the owners of prior rights to oppose if they feel that is required – so it remains important that action is taken to monitor later applications to ensure one is aware of conflicts in time to take a decision on opposing (either by the existing process or the new fast track).

Senior Partner, James Sanderson says, “The new Fast Track Opposition procedure promises a quick and simplified opposition process for those with a straightforward case to oppose the registration of a new mark.  It will not be useful in all situations and the standard process may be the preferred option in many cases.  It remains to be seen how popular the fast track route becomes but it does potentially offer a quicker resolution to some matters.”

For more information on the trade mark opposition procedure or any aspect or trade mark protection, please contact the team at Sanderson & Co.

Userful Links:  http://www.legislation.gov.uk/uksi/2013/2235/made

New UK Police Intellectual Property Crime Unit swings into action

City of London Police

City of London Police

Today sees the launch of the Police Intellectual Property Crime Unit. The aim of the new unit is to target Intellectual Property crime, which currently costs the UK economy hundreds of millions of pounds each year.

The unit is being funded by the Intellectual Property Office, which is part of the Department for Business, Innovation and Skills, and run by the City of London Police.

On its first day of operation the unit arrested 2 men in the early hours in Birmingham, on suspicion of importing and selling counterfeit DVD box sets with a value of £40,000.

Minister for Intellectual Property, Lord Younger said:

“Criminals are continually finding new ways to exploit, produce fakes and abuse the intellectual property rights of British businesses, despite the progress made combating IP crime. It not only damages the UK economy, but substandard goods and services can pose real threats to consumers too. Intelligent, co-ordinated and effective enforcement is key to tackling those who exploit the hard work of others.”

“Stopping the growth of online piracy and counterfeit goods in the UK is one of my main priorities. The new IP crime unit, funded by the IPO and launched today by the City of London Police, will make a real difference in the fight against online IP crime.”

“Working with the City of London Police, which has recognised expertise in tackling economic crime, demonstrates this Government’s commitment to supporting business, protecting consumers and delivering economic growth. I look forward to seeing the results that this unit will deliver over the next two years.”

“Around seven million people a month visit sites offering illegal content in the UK. Globally, it is projected that digitally pirated music, films and software will account for losses of around $80bn –this is expected to rise to $240bn by 2015.”

See more at: http://www.cityoflondon.police.uk/CityPolice/Departments/ECD/PIPCU/PIPCUNews/130913-pipculaunch.htm#sthash.tvmWuu20.dpuf

If you need advice about IP protection or advice about how to deal with infringement of your rights please contact us.