International intellectual property news

Further details about the trade mark examiniation system

Further to our recent notice on the new examination system to be adopted in the UK in October 2007, the UKIPO has now provided details of how Community Trade Mark owners and International Registration owners (where the Registration extends to the European Community) can request notification of the publication of a conflicting mark. The owners, or their representatives, may OPT-IN to receive notification of any later filed conflicting trade mark applications in the UK. The fee will be GBP £50 per mark and will be valid for a period of 3 years.

On the other hand, owners, or their Representatives, of UK filed trade marks and International trade marks designating (covering) the UK, who do not wish to be notified of any later filed conflicting marks can OPT-OUT of the notification system. There does not appear to be any fee for opting out of the notification system.

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.