IMPORTANT CHANGES TO UK TRADE MARK EXAMINATION SYSTEM
As of 1 October 2007 the UK Intellectual Property Office (UKIPO) will no longer object to applications on the basis of a third party’s prior rights. At present, when a person applies to register a UK trade mark, the application will be found to be unacceptable for registration if there are any identical or confusingly similar earlier trade marks. It is then up to the Applicant to try to overcome the prior conflicting marks, often by limiting their application so as to remove any identical and/or similar goods/services or by obtaining Consent from the proprietors of the earlier marks.
Under the Community Trade Mark system, the situation is very different. When a person applies to register a Community trade mark, the Community Trade Mark Office (CTMO) will not reject their application on the basis of prior identical/confusingly similar trade marks. Instead, the CTMO simply informs the Applicant of any potentially conflicting earlier trade marks and notifies the proprietors of any of those Community trade marks of the acceptance of the application. It is then up to the proprietors of the earlier trade marks to file opposition.
So as to align itself with the Community Trade Marks system, the UKIPO has decided to change its Examination procedure and abandon examination on Relative Grounds. The UKIPO will instead adopt OHIM’s “Search-and-Notify” system and examine only to see whether or not a trade mark is distinctive enough to qualify for registration.
Under the Notification system, the UKIPO will conduct a search as part of the Examination process and will inform both the Applicant for registration of the results of the search and also the owners of earlier conflicting UK trade marks identified in it if, and when, the application proceeds to publication. The UKIPO has indicated that the proprietors of earlier Community trade marks and International trade mark registrations designating the UK will not be automatically notified of a later filed UK application under the Notification system.
In view of this, it is crucial for all Community trade mark and International rights holders to consider putting in place Watch systems covering the UK, to guard against conflicting applications proceeding to registration.
When to involve us - and where
When?
The sooner the better. Given early involvement in your project or predicament, we can plan ahead and devise the best possible intellectual property registration, management and enforcement strategies - early involvement is particularly important if the strategy needs to embrace a number of different countries.
Where?
Easy. Just make contact with one of our UK offices
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