Countdown for new UK trademark examination rules

The new era for UK trademark applications is drawing ever nearer. From October 1 2007 the UK Intellectual Property Office (UK-IPO) will examine UK trademarks only on the basis of absolute grounds, with a view to realising greater conformity with European Community trademark procedures. But what will this mean in practice?

At first glance, the ramifications appear few in a move that is symbolic of the inexorable decline in the significance of national applications in an increasingly global trading environment. The UK-IPO will continue to search the registers for earlier conflicting trademarks and will continue to draw applicants’ attention to any marks that it finds. It will, however, no longer refuse applications on the basis of those citations. In adopting this new approach, the United Kingdom is arguably being fairer in handing the power to oppose an application back to the market. The UK-IPO may currently be refusing marks in circumstances where there is no actual commercial conflict between marks or their owners.

From October 1 holders of existing UK trademarks (including international marks designating the United Kingdom) will be automatically notified by the UK-IPO if their mark is cited against an application, in order to give them the opportunity to lodge an opposition. In spite of this, existing mark holders should not be too sanguine. The effectiveness of the new procedures will depend on how comprehensive the UK-IPO’s searching and monitoring are. Consequently, the rights of mark holders may not necessarily be policed or protected to the same level as before.

No one wants to be inundated by trademark notifications if those trademarks are of no commercial concern. On the other hand, no one would wish a conflicting trademark to slip through the net. Both could happen under the new regime – and businesses should prepare themselves for the changes ahead. Moreover, the UK-IPO will not notify owners of Community trademarks unless they opt in to a formal notification service (at a price).

If the UK-IPO adopts the searching criteria currently offered by the Office of Harmonisation for the Internal Market (OHIM), existing mark holders will benefit from only a rudimentary level of security, compared to holders of trademarks obtained in countries that still observe relative grounds examination. The number of trademark oppositions in the United Kingdom is therefore likely to increase and could well reach the 25% opposition rate of Community trademark applications.

Trademark owners cannot afford to ignore the consequences of the abolition of relative grounds examination in the United Kingdom. Proactivity, including putting in place trademark watching services, will be essential, but only time and experience will reveal the true impact of the change in law and procedure.

In addition, it will be interesting to see what impact the changes have on the number of UK trademark applications filed. In dispensing with the one major differentiator between UK and OHIM trademark practice, the United Kingdom is likely to surrender ground to OHIM. The advantage to trademark owners will be greater uniformity in the trademark laws of EU member states. This should, at least in theory, enable trademark owners to predict with greater certainty the outcome of trademark disputes and will also reduce the number of arbitrary refusals of applications by the UK-IPO.


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