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What is Happening ?
On 1 October 2007, the UK Trade Marks Registry (now known as the
UK-IPO) will cease refusing trade mark applications on the basis of
conflicting earlier marks unless the owner of the earlier mark files
opposition.
Notification – The New Procedure
From 1 October 2007, the UK-IPO will continue to search for conflicting
rights when examining a trade mark application but, rather than
objecting to the application on the basis of marks located in the
search, will simply supply the applicant with a provisional list of
such earlier marks. The applicant will have an opportunity to respond
by limiting the range of goods and/or services covered by the
application and/or arguing that there is in fact no likelihood of
confusion. The UK-IPO may, as a result be persuaded to remove earlier
marks from the provisional list before the list is finalised.
Once the search procedure is completed, the application will be
published even if there are still earlier marks on the list. There is
then a three month period for third parties to oppose the application.
In parallel with the publication of the application, the UK-IPO will
notify the proprietors of any UK earlier national mark on the final
list of conflicting rights that the application has been published and
is open to opposition. Proprietors of European Community marks on the
list will also be notified, but only if they have taken positive steps
to opt-in to the system by paying the notification fee.
Why is the Change Important ?
Effective protection of your trade mark rights against dilution will
require you to take a more active approach as the UK-IPO reduces its
policing of the Register.
What should you be considering ?
Do you want to apply for registration of a UK trade mark ? - It
should now be easier to register trade marks in the UK. Marks which
previously would have been refused during examination due to conflict
with earlier rights will now only be refused if there is a formal
opposition by the holder of the earlier right.
- Have you had a trade mark refused by the Registry during
examination or have you been unable to register it as broadly as you
wished because of a conflict with an earlier right ? - You should consider filing a new application as it may now be successful.
- Do you own European Community applications and/or registrations
? – Should you "opt-in" to receive UK-IPO notifications ? The
initial "opt-in" period is 3 years and the cost of this if we
organise it for you will be around £115+VAT per mark for 3 years.
- Should I set up a trade mark watch for my more important marks ? – if you have trade marks outside the UK, it may be more
cost-effective to set up a world-wide watch to keep you advised of attempts to register conflicting third party marks than to
take steps to monitor the UK position alone.
What should you do next ?
This note only outlines the changes and cannot deal with more detailed
considerations. Trade mark owners will need to establish
a strategy for dealing with the new system which best fits their
commercial needs and matches their attitude to risk. We would be
happy to advise on an appropriate strategy for your business.
Please contact your usual Reddie & Grose professional for further
advice.
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