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Change to UK Trade Mark Law and Practice at the UKIPO

This is an important change and brings UK practice into line with European (CTM) Practice.
The main change is that objection will no longer be taken to trade mark applications on so-called relative grounds. This means that an applicant may have an application accepted and published even though there are earlier similar trade marks already on the register. Once published, the owner(s) of earlier trade marks will be notified about the application and have the option of opposing. The onus is on the owner of the earlier trade mark. If no opposition if made, the trade mark will be registered.

The change affects all users of the UK trade mark registration system. There follows a description of the changes, and specific information for you including detail of any action you should take to protect your interests.

Towards the end of the page you can find:

• A reminder of the steps in the UK and CTM registration processes
• Frequently asked questions (FAQ’s)

Overview

• The changes follow an extensive consultation period.
• Examination of trade mark applications continues to include a search.
• But with notification rather than objections from the Examiner
• Applications will only be refused on relative grounds if opposed
• Only owners of earlier trade marks may oppose on relative grounds

Relative Grounds – The Search

• A search through earlier trade marks will be carried out in the previous way
• Results will be included in the Examiner’s report to the Applicant
• Applicant will have 2 months to contest the results or amend the application
• If uncontested, application will be published and owners of earlier trade marks will be notified.

Contesting the Search Results

• There may be benefit to the Applicant in contesting the search results.  If successfully contested then the UKIPO will not notify the owner of the earlier trade marks.
• The 2 month period can only be extended if there is ‘a good reason’.
• Only one round of correspondence with the Examiner is permitted
• Options for contesting include:
• Arguing that the Examiner has got it wrong and the trade marks are not similar
• Removing conflicting terms from the list of goods/services

Absolute Grounds

• Remain unchanged
• Your trade mark still has to be inherently registrable

Who will be notified?

• Based on the final list in the search report (after any are removed following contest)
• Owners of UK Trade Mark Registrations
• Owners of International Registrations designating UK
• Owners of CTMs, but only those who have opted in
• List of those notified will be available for public inspection
• List of Owners of CTMs who have opted in will be available for public inspection

When?

• Notification will happen at time of publication
• Will be sent to address for service (i.e. ip21 in the case of our client’s trade marks)
• We will pass them on with our comments

Who can Oppose?

• Only owners of earlier trade marks can oppose
• Licensees can intervene in opposition proceedings
• Invalidity/cancellation still possible after registration

Opting in – CTM Owners

• Requires filing a form and paying a fee to UKIPO
• Covers 3 years
• Further fee may be payable then (UKIPO is undecided)
• Strongly recommended done before 1st October
• Call +44 (0)207 6458250 or email ctmoptin@ip21.co.uk for cost details.

Advice to clients:

Owners of UK Trade Mark Registrations

• We will begin to receive notifications from the UKIPO from 1st October
• We will forward them to you with
• Details of the later application
• The deadline for opposition
• An explanation of the options available to you
• If there is an obvious need to oppose, we will tell you

Owners of CTM Registrations

• You need to opt-in to the above notification process
• As there are costs involved, we will not do this for you automatically
• You can instruct us now by sending an email to ctmoptin@ip21.co.uk
• We will also be writing to all our CTM-owning clients seeking instructions to opt-in
• You will be familiar with the notification process that has been operating in the CTM system since its start in 1996.  The UK system is broadly similar.

Applicants for UK Trade Mark Registration

If your application has been suspended so that it will be dealt with under the new law, please bear in mind the following points:

• We suspended your application because earlier registrations were cited in examination and raised as objections;
• Under the new law those objections will disappear
• But the owners of the cited registrations will be notified
• They may oppose your application
• The UKIPO has a large number of suspended applications to deal with from 1st October
• It may take the UKIPO some months to clear the backlog
• We may not receive confirmation that the suspension has been lifted until the end of the year.

To all Clients:

There will be a glut of activity after 1st October as the new law comes into force and the backlog is cleared. There will be some short deadlines to deal with and your attention to these will be appreciated!

Overview of UK TM Application Process

Overview of CTM Application Process

* Objections may be raised during examination.  This may slow the process down while they are dealt with.

** Owners of earlier registrations cited in search reports are notified at this stage.

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Frequently asked questions (FAQ’s)

Q – Why is this change in procedure happening?

A – There are 2 reasons. One is that the change brings the UK practice directly into line with that of OHIM (the European Trade Marks Office) in relation to CTM applications. The second is that there have been complaints in the past that the objections raised by UK Examiners based on earlier trade marks have been unrealistic in that they have not reflected the market place. The result is that many SME’s have seen their costs rise in fighting against objections or have been refused registration as a result of an earlier registration even though there is no real conflict with the earlier trade mark in the market place. The aim is therefore to make it easier to register trade marks and for the trade marks register to be a better reflection of the realities of the market place.

Q – What happens if I do nothing?

A – As the owner of a CTM it means that a competitor may register your (or a similar) trade mark in the UK without your knowledge. As a result, your rights are diluted and your competitor may claim your trade mark as “registered” and use the ® symbol.

Q – What happens if I am late opting-in

A – There is quite a backlog of applications at the UKIPO, which have been suspended so that they can be treated under the new law. This means that there may be applications filed by your competitors where your CTM stands in the way. After 1st October, these applications will be allowed to proceed. If you have not opted-in then you will not be notified and if you opt-in late you may miss the early batches of suspended applications being released.

Q – How much does it cost to Opt-in?

A – The statutory fee we have to pay the UKIPO is £50 for 3 years of notifications. On top of the we will charge a fee of £175 to cover our administration in paying the fee and of sending out notifications and providing initial basic advice on opposition.

Q – I have a UK registration and a CTM registration – do I need to opt in?

A – It is quite possible that opting in is not necessary for you, but you should check with us. Sometimes the rights covered by a CTM will differ in important ways from the UK registration.

Q - Why should we do this if we have a watching service?

A – A watching service will not tell you that your trade mark has been cited by an Examiner in an official search report. However, if you receive a notification from the UKIPO, it will confirm that the UKIPO regards the 'new' trade mark that is being applied for is similar to your trade mark and you have grounds to oppose. The Trade Mark Examiner uses the same criteria as would be applied in an opposition, and so we know that the opposition should succeed. If and when you oppose, the fact that the Examiner sees a conflict can be one of the statements of grounds, and the onus will shift to the Applicant to show that the trade marks are not similar.

Q- The opt-in is for 3 years. What happens at the end of the 3 years?

A – At the moment, the assumption is that the opt-in can be renewed for a further 3 years. However, the UKIPO will keep things under review and things may change in the intervening period. For example, the official fee may change from the current £50 – it could increase, decrease or be abolished altogether.

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