Thursday, 3rd October, 2013

New accelerated UK trade mark opposition procedure

The United Kingdom Intellectual Property Office (UKIPO) has introduced a 'fast track' opposition process to make challenging someone else's trade mark application easier, quicker and more cost effective.

Some of the features of the 'fast track' opposition process are listed below.

  • Limited grounds - the fast track opposition process is only open to oppositions based on the grounds that the marks and goods or services are too similar and there is a likelihood of confusion.
  • Lower opposition fee - the official filing fee for a fast track opposition is £100, half the standard opposition fee.
  • Reduced timeframes - the timeframe of an opposition using the fast track process is expected to be around six months, compared with 12-18 months for the standard opposition process.
  • Evidence of use upfront - opponents will need to submit evidence upfront that they are using their trade mark, if their trade mark registration is over five years old.
  • Earlier rights limited - opponents can only rely on their rights in up to three registered trade marks if they want to use the fast track process. If the rights relied on are in more than three registrations, or rely on a trade mark application, or other grounds, such as passing off, then a standard opposition procedure will need to be followed.
  • Decisions through written submissions - unless deemed appropriate by the Hearings Officer, hearings will usually be determined from the written submissions of each party rather than on the parties appearing and presenting oral submissions.

The UKIPO stopped raising identical and similar mark objections in 2007. The onus is now on owners of existing identical or similar marks to oppose trade mark applications if they have a concern. This differs from Australia and New Zealand where the trade mark registries will still examine for similar and identical trade marks and raise objections to applications.

The number of oppositions filed in the UK is surprisingly low. Prior to 2007, 27% of UK trade mark applications received an identical and similar mark objection. 7.5% of applications ultimately did not achieve registration. At present, only 4.5% of trade mark applications are opposed on the grounds of an existing identical or similar mark. This is despite the UKIPO sending out notifications to owners of potentially identical and similar marks for 42% of applications.

The UKIPO's concern is that small-and-medium-sized enterprises are not using the opposition process to defend their legitimate trade mark rights for fear of the potential cost and time implications. The fast track opposition process, which came into effect on 1 October 2013, is designed to respond to this concern.

For owners of United Kingdom and European Community trade mark registrations, the fast track opposition process offers another option for opposing a trade mark. While the potential cost and time savings are attractive, whether the fast track option is the best option for opposing an application will still depend on the circumstances.

If you have any questions about this process, please contact us.