Summary and implications
Following a Tribunal Practice Notice issued by the UK Intellectual Property Office (UK IPO) on 30 September, opponents of UK trade mark applications will now have one day less to file their oppositions.
The change took place with immediate effect and will even apply in cases where the application has already been published. Brand owners and their advisors will therefore need to amend their records to show that the opposition deadline in respect of any applications that they are considering opposing is now one day ahead of the one previously advised.
Reason for the change
Until last week, the date from which the two month opposition period was calculated in all UK opposition proceedings was the day after publication. The UK IPO, however, recently took a look at the Trade Mark Rules 2008 ("Rules") and decided that it has been getting this wrong! The date from which the opposition period should be calculated is the day of publication itself. As a result, if publication occurs on 5 October, the opposition deadline will now be 4 December (unless extended by one month to 4 January).
Impact on existing proceedings
The change will take place with immediate effect.
- All existing opposition deadlines have been reset and are now one day earlier.
- The UK IPO will not review the admissibility of any oppositions already filed. If the matter of a late filing is raised by either of the parties to an opposition in such cases, the Registrar proposes to use its powers under the Rules to extend any relevant time limit retrospectively. This will mean that the opposition period will be treated as having expired on the date that was understood to be the final date for filing a Notice of Opposition (TM7) or Notice of Threatened Opposition (TM7A) under the previous guidance.
- There has been no change to the way in which periods for filing a counter-statement or entering into a cooling off period are calculated.