In response to concerns about the time and cost of UK trade mark opposition proceedings, and in an effort to assist businesses, specifically SMEs, to defend their trade marks before the Intellectual Property Office (IPO) where they believe they have legal grounds and a commercial interest in doing so, the UK IPO will, in October 2013, introduce a lower cost, fast-track opposition procedure, whereby owners of existing trade mark registrations can defend their rights against later-filed UK applications by third parties to register conflicting marks.
Detailed guidelines relating to the new fast-track opposition procedure will be issued in due course, but the main points worth noting are as follows:
- The fast-track opposition will only be available where grounds are limited to those based on sections.5(1) and 5(2) of the Trade Marks Act 1994, i.e. earlier identical mark(s) protected for identical goods/services, earlier identical mark(s) protected for similar goods/services, or earlier similar mark(s) protected for similar goods/services. The number of earlier marks which can be relied upon in a fast-track opposition will be limited to three.
- The official fee for a fast-track opposition will be £100. Further, in order to remove the filing fee as a factor in the decision as to whether to file a fast track or conventional opposition, the official fee for a conventional opposition will also be reduced to £100 where the grounds of opposition are limited to section 5(1) and/or 5(2);
- Where a fast-track opposition is based on a trade mark registration that was more than 5 years old at the date of publication of the application under opposition, proof of use of the earlier registered mark must be filed with the Opposition. A limit will be placed on the volume of evidence that can be filed. Where the requirements of a fast-track opposition in this regard are not met but the requirements of a conventional opposition are, the Registrar shall have discretion to treat a fast-track opposition as a conventional opposition;
- Leave must be obtained to file any evidence other than the Proof of Use submitted with the Opposition;
- Provision will be made for an oral hearing where requested by either party and deemed appropriate by the Hearing Officer, or where initiated by a Hearing Officer. Hearings may be conducted by telephone rather than in person;
- An appeal fee of £250 will be introduced. This fee will not be refundable, but will be recoverable by the winning party.