Time was when the Trade Marks Registry rejected a trade mark registration application if it conflicted with an existing registration. Since 1 October 2007 all this has changed and the onus is now much more on self help by brand owners Mark Hickey of trade mark agents Murgitroyds reports.
Changes to Examination & Opposition Practice at the Trade Marks Registry
Law stated as at: 1 October 2007
The Applicant's Perspective
The Trade Marks Registry is changing its examination practice with effect from 1 October 2007. After that date the Registrar will no longer have the power to refuse to register a Trade Mark on the basis of a perceived conflict with earlier UK Trade Marks, Community Trade Marks or International Trade Mark registrations that designate the UK or European Union. It will now be left to the owners of cited marks to oppose.
The main points to note are as follows.
The Registrar will conduct a search and notify the applicant of the subsistence of any conflicting earlier marks. The following options are available to address the conflict:
(a) Withdraw the application in its entirety to avoid any conflict with the cited marks (this may necessitate consideration of a new Trade Mark for use and registration);
(b) Amend the specification to avoid a clash of goods and/or services;
(c) Argue with the examiner in an effort to overcome the citation of the earlier rights;
(d) Seek consent from the owners of the cited marks to use and registration;
(e) Request the application proceeds in any event without the formal withdrawal of the objections raised by the Examiner based on the earlier right and risk one or more oppositions being filed.
Furthermore, in the absence of any response, the Registry will assume that you wish to progress the application and proceed to the notification/publication stage. This assumes that the examination report does not raise any basis of rejection on registrability grounds, which must be addressed separately.
If the application progresses to advertisement in the journal without the formal withdrawal of the citation by the Examiner, then holders of conflicting earlier national marks or International marks designating the UK will be informed of the publication. Owners of earlier conflicting Community Trade Marks will only be informed if they "opt in" (see separate note). At that point they may choose to oppose.
It is worth noting that it is possible to determine if the owners of any earlier CTMs have "opted in" by reviewing the case enquiry records on the IPO website.
There are one or two other developments to consider.
It is no longer possible to file evidence of honest concurrent use in order to overcome citations. Evidence of use can, of course, be submitted in any opposition proceedings to demonstrate an absence of confusion.
There is only one opportunity allowed to overcome earlier citations. If the examiner rejects your arguments and/or amendments to your specification then the only option available is to proceed to publication on "notice" to the proprietor of the earlier mark or withdraw your application. No Hearings or Appeals are allowed on the basis of a refusal on relative grounds.
The Proprietor's Perspective
The Trade Marks Registry is changing its examination practice with effect from 1 October 2007. After that date the Registrar will no longer have the power to refuse to register a Trade Mark on the basis of a perceived conflict with earlier rights. It will now be left to the owner of the earlier marks to oppose. Thus, it is now up to you, as the proprietor of such marks, to effectively police and enforce those rights against others.
The examiner will draw up an examination report including a search for conflicting earlier registered rights effective in the UK.
If the applicant chooses to proceed to publication in the face of the earlier rights, the UK Registry will notify the holders of the cited marks (including International Registrations designating the UK) and so give the owners of these earlier rights an opportunity to oppose. Owners of earlier European Community trade marks (including International Registrations designating the European Union), will only be notified if they "opt-in" by filing a form and paying a fee.
Next steps
If you have a registered or pending Community trade mark, or an International Registration designating the European Union, we would strongly recommend that you "opt-in". The official opt in fee covers a three-year period and a service is available from Murgitroyd whereby notifications received will be reported to you together with advice on the extent of the conflict and the merits of a potential opposition.
For proprietors of earlier UK marks (or Internationals designating the UK) notifications can be forwarded automatically, with or without comment depending on the arrangement with your advisers.
Mark Hickey
Director of Trade Marks
Murgitroyd & Company
mark.hickey@murgitroyd.com
