In a radical move, the Intellectual Property Office is looking at introducing a fast track system for trade mark registration. This could slash the average time it takes to get a brand registered from months to weeks. But is the IPO underestimating demand? Stephen Groom investigates.
Who: The UK Intellectual Property Office
When: September 2007
Law stated as at: 27 September 2007
The UK Intellectual Property Office ("IPO") launched a public consultation on the introduction of a "fast track" system for processing applications to register trade marks.
This followed a recommendation in the Gowers Review of Intellectual Property, published December 2006.
The development is also linked with another change in trade mark registration procedure that has already happened.
This is the ending, effective October 1 2007, of the procedure whereby an application to register a trade mark was refused if the IPO's own searches revealed a conflict with an earlier registered trade mark. Reported elsewhere on marketinglaw.co.uk, this change means that rather than doing the refusing itself, the IPO will still notify the applicant of such possible conflicts, but will put the onus firmly on the owners of existing marks to oppose a potentially conflicting application.
IPO to have more time on its hands
One side effect of this is that theoretically at least, the IPO will have more time available for other activity, which is where this new proposal comes into play.
The suggestion is that for those who are prepared to pay extra for the privilege, the IPO operates a "fast track" system for examining trade mark applications received.
Currently the IPO aims to get round to the critical first examination within 4-6 weeks after the application has been filed. Thereafter, if the brand owner gets lucky and there are no complications along the way, he may be looking at a registration within 9 months.
The new proposal is that, for those prepared to pay extra for "fast tracking," the IPO is talking about a time frame of just two weeks to the first examination, starting the day after filing of the application. Within this time the IPO will aim to issue (1) the results of its search for earlier conflicting marks and (2) any objections to registration, for instance on grounds that the mark is "devoid of any distinctive character."
This is provided the application is all in order. Key requirements here will be that the application is made online and the fee for the application is paid online also.
£300 extra for fast track
So how much extra will applicants have to pay if they want to use fast track? Just £300 per mark, the IPO suggests, so instead of the usual £200 per mark (which includes one class, with each additional class costing £50 extra) the basic fast track fee will be £500 inclusive of one class.
But will the quicker first examination turnaround lead to earlier registrations? The IPO says it will also aim to deal with any post examination correspondence "as quickly as possible" and to arrange any hearings required in an expedited manner.
Why this matters:
Whether this proposal will lead to consistently quicker trade mark registrations for "fast trackers" remains to be seen. The IPO says it expects most users to stick with the ordinary filing procedure and save their money.
Since the IPO aims for the standard service to turn round a first examination result within one month, the advantage gained for the cost of £300 will be just 2 weeks, although there may be further knock-on time gains from speedy correspondence turnaround etc.
The IPO cites one risk of introducing fast track as the registration staff being inundated with fast track filings and unable to meet the 10 day obligation.
However the IPO dismisses this with the bold prediction that take-up of fast track will run at no more than 10% of all applications, expressing confidence that staffing levels will be well able to deal with this degree of fast track input.
Whether this will be borne out by the reality remains to be seen, but our hunch is that for a mere £300 extra per mark, a far higher proportion of brand owners than 10% will regard fast track as an attractive option and adopt it as the norm.
Comments on the proposals are invited by 14 December 2007.