Important Change to Examination of UK Trade Mark Applications
Introduction
The UK Trade Marks Registry has announced a significant change to the UK trade mark registration system.
As Carl Steele, a senior associate in the IP team at Ashfords, explains:
"At present, when a person applies to register a UK trade mark the application will be rejected by the UK Trade Marks Registry if there are any earlier identical, or confusingly similar, registered trade marks protected in the UK for identical, or similar, goods/services.
This is not the case where a person applies to register a Community trade mark (which covers both the UK and all other EU states). OHIM, the registration body, will not reject an application just because there are earlier identical, or confusingly similar, registered trade marks protected in the Community for identical, or similar, goods/services. OHIM leaves it up to the owners of these earlier trade marks to themselves oppose an application if they think it conflicts with their rights."
Following a lengthy consultation process, the UK Trade Marks Registry has decided to change the current system.
Instead of rejecting applications for marks that are identical, or confusingly similar, to earlier registered trade marks protected in the UK for identical, or similar, goods/services, the Registry will be introducing a 'search and notify system'. This will involve informing the owners of any earlier trade marks (if their mark is identified in an official search against a new application) and the applicant of the potential for conflict between the marks. The decision whether or not to oppose the registration will then be placed solely in the hands of the owners of the earlier trade marks.
As Carl Steele explains:
"The advantage to applicants under the new system will be that the Registry will not automatically block applications due to the fact that they are for marks that may be confused with earlier marks. Instead, the owners of earlier trade marks will be made aware of the prospective registration of a potentially conflicting mark, thus giving them a chance to oppose the application. However, if they see no real commercial conflict then they are unlikely to spend money opposing the mark and thus the mark will proceed to registration.
The disadvantage of the new system to the owners of earlier trade marks is that it will put the burden and cost on them to block any new applications that are made for identical or confusingly similar trade marks – something that at present the Registry automatically does for them at no charge to them."
The UK Trade Marks Registry is hoping to introduce this change in procedure by October 2007. Before then it will need to introduce necessary legislative and administrative changes 'to bring it to fruition'.
If you need help with any trade mark, intellectual property or commercial contract issues then please contact Head of Intellectual Property Law on 01392 33 3951
Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
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