From 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