The IPO has launched a consultation on the modernisation and consolidation of the Trade Mark Rules 2000. In addition the IPO is also proposing more substantive changes. David Pawan scrutinises the new rules and their likely impact.
Topic: Brands
Who: UK Intellectual Property Office
When: March 2008
Where: London
Law stated as at: 31 March 2008
What happened:
The Trade Mark Rules 2000 ("2000 Rules"), which have been amended seven times since they came into force, set out the procedural and operational requirements which apply to trade marks and trade mark applications. In much the same way that the corresponding rules for registered designs and patents were recently modernised and consolidated, resulting in the Registered Designs Rules 2006 and the Patents Rules 2007 respectively, the UK Intellectual Property Office ("IPO") has launched a consultation on the modernisation and consolidation of the 2000 Rules. The consultation, which closes on 26 May 2008, has the following four main objectives:
- To consolidate the existing changes to the 2000 Rules to remove duplication, inconsistency and possible confusion.
- To bring the UK fully into line with international best practice, and enable ratification of the Singapore Treaty on Trade Mark Law adopted in 2006 ("Singapore Treaty").
- To make the tribunal system more flexible and efficient, in line with that for registered designs and patents, and current legal practice.
- To increase the speed and efficiency of the registration process, and to reduce costs.
Annexed to the consultation document is a draft set of the new rules which, it is proposed, will come into force on 1 October 2008 ("2008 Rules"). This article shall further analyse how these four objectives have been addressed in the draft 2008 Rules.
Consolidation of 2000 Rules
In addition to incorporating all seven amendments to the 2000 Rules, the IPO has made other stylistic changes in the draft 2008 Rules, for example making the rules gender-neutral, and adopting a more modern drafting style.
International Harmonisation
To fully comply with the Singapore Treaty, the UK needs to make one change to its existing rules, as set out in rule 77 of the draft 2008 Rules. Draft rule 77 provides that, in accordance with Article 14(2) of the Singapore Treaty, in most dealings between trade mark applicants and owners, and the IPO, the applicant or owner will have the right to a retrospective extension of time to complete an action before the IPO, provided it is sought within two months of the end of the relevant expired period, and subject to paying a £50 fee.
Improvements to the Tribunal system:
(i) Changes to opposition procedures
In 1994 the opposition period for trade mark applications was changed from an extendable period of one month to a fixed period of three months, to allow, inter alia, for time for negotiation between parties. Since then, a twelve month post-opposition cooling-off period has been introduced for more extended negotiations. The IPO believes that this period has been very successful, citing that nearly 90% of those cases entering the cooling-off period are resolved without the litigation continuing. The IPO contends that the introduction of this cooling-off period has reduced some of the justification for the length of the three-month opposition period. Moreover, when coupled with adverse comments by some in relation to the length of the opposition period, the IPO reviewed practice elsewhere and concluded that there was no international "norm" for the trade mark opposition period, although opposition periods tended to be two or three months. The IPO is therefore considering the following two options:
(a) Reducing the current opposition period to two months to accelerate the registration of unopposed trade marks; or
(b) Splitting the opposition period, having an initial six-week period from publication for parties to consider whether to oppose. If further time is needed to make a decision, then they will file an electronic form and the period will automatically extend to three months. If no opposition or form is filed within six weeks of publication, then the mark will be registered (draft rules 17(2) and (3) of the 2008 Rules).
(ii) Changes to the cooling-off period (draft rule 18, 2008 Rules)
Whilst the IPO considers that the cooling-off period has been successful in general, it believes that the system does not presently encourage disputes to be settled as quickly as they could be, or that the period allowed does not always appear to be long enough. Therefore the IPO is considering reducing the cooling-off period to nine months initially, and introducing the option for parties to obtain a single extension of the period to a maximum period of 18 months, to be agreed between the parties.
(iii) Period for filing counter-statements
The IPO is also considering proposing to standardise the period for filing a counter-statement in opposition, invalidation and revocation proceedings to two months in each case.
(iv) Case management powers
As is the case with the system for registered designs and patents, the IPO is proposing that in contested proceedings the registrar has power to set a timetable for the parties to file evidence, taking account of the circumstances of each case (draft rule 62, 2008 Rules). This will be in contrast to the current rules which specify fixed-time periods for the filing of evidence, and such periods are specified separately for the different types of proceeding.
It is further proposed that the registrar be given express powers to manage proceedings covering the types of things that he has dealt with on the basis of an assumed inherent jurisdiction, as well as powers concerning the evidence required and the way it is to be submitted (draft rule 64, 2008 Rules).
(v) Evidence – Non-use cases (draft rule 38, 2008 Rules)
The IPO is proposing to change the rules, which currently provide for four rounds of evidence in non-use cases, so that the trade mark owner only has one chance to file the evidence of use which he intends to rely upon to defend his registration. Consequently the applicant will have one period in which to file any evidence or submissions in response, and the owner will have one further period in which to file evidence strictly in reply. This new approach would essentially mean that the usual number of evidence rounds would be reduced from four to three, and the IPO would avoid disputes over whether the proceedings should continue in the face of the trade mark owner's "first stab" at evidence of use of the trade mark.
(vi) Timing of procedural appeals (draft rule 70, 2008 Rules)
In a similar fashion to the present rules in relation to Community trade marks, the IPO proposes to introduce a new rule providing that interim decisions of the registrar which do not terminate the proceedings may not be appealed against independently of the registrar's final decision in the proceedings, without leave. It appears that leave will only be granted where the interim procedural decision is likely to have a determinative bearing on the outcome of the proceedings. This is in contrast to the rules which currently enable an appeal to be lodged following any decision of the registrar, including procedural decisions which do not terminate the proceedings.
Modernisation
The IPO is proposing a change to the information published in the weekly Trade Marks Journal: applications and amendments to applications made after publication, and any other change open to third party opposition, will continue to be published. However registrations, renewals, revocations and other post-registration information will not be published there, and will instead be available in a searchable format on the IPO's website. The IPO anticipates that this will speed up the publication of new applications. Moreover, the IPO also plans to shorten the period for remedying defects in an application, and for the correction of classification queries.
Why this matters:
Trade mark owners and practitioners should benefit from having a consolidated set of trade mark rules, rather than having to piece together several sets of rules, particularly as recent changes to the rules have been significant, for example the abolition of relative grounds examination and the introduction of a fast-track registration system (commencing in April 2008).
Many of the proposed changes put forward by the IPO are unlikely to be contested, such as the introduction of case-management powers for the registrar and the standardisation of the time period for filing counter-statements. The former is likely to become more important in the future as the number of contested cases before the registrar is expected to increase due to the abolition of relative grounds examination.
Nonetheless, there are other proposals that will require further consideration and acclimatisation if introduced, for example the proposed changes to the opposition and cooling-off periods. Accordingly practitioners will need to carefully examine the new rules prior to their planned implementation date of October 2008.
