The UK Trade Mark application process changed on 1st October 2007, and the Intellectual Property Office (IPO) will no longer act as enforcer for trade marks protected in the UK.
Instead of objecting to a new trade mark application because of a previously registered identical or similar trade mark, the IPO will simply provide a ‘search and notify’ service and leave it entirely to owners of existing trade mark registrations to take action to enforce their rights.
The IPO will still search for potential conflicts with prior registrations or applications but the search will merely be advisory. When the applicant receives the search they will have one chance to either argue against the marks cited within it or to alter the application so the citations are no longer relevant. If citations remain in place, the application will be accepted for publication but the owners of the cited marks will be informed of the new application. The opposition process will then be available for the owners of the cited marks to oppose the new application if so desired.
Owners of UK national registrations and International registrations designating the UK will be notified automatically of any potentially conflicting applications, however owners of Community (EU) Trade Marks will be required to ‘opt in’ to receive such notices (subject to a subscription charge).
Where a company has not previously been able to seek trade mark registration because of an earlier registration blocking their way, yet the company has been trading for a number of years, the current procedure followed by the IPO may now permit registration, as it is up to the owners of prior rights to enforce them. Therefore, if the owner of an earlier registration does not object because in practice there is no conflict, registration can be achieved.
The current procedure followed by the IPO means there is now a greater need to monitor new applications for trade mark registration, as the IPO ‘search and notify’ procedure is not infallible. Also, applications to register Community Trade Marks, which cover the UK as part of the EU, are not subject to an official ‘search and notify’ procedure to alert owners of earlier UK registrations.
Consequently, employment of a watching service should now be an essential consideration in maintaining effective trade mark protection – by subscribing to a watching service, possibly conflicting new trade mark applications can be reported at the stage when opposition can be lodged, and a decision whether to oppose or not may then be made accordingly.
If you wish to find out more about trade mark watching services, the IPO ‘opt-in’ service for Community Trade Marks or require more information about how your rights may be affected, please do not hesitate to contact us.
