The UK IPO has introduced a new fast-track trade mark oppositions procedure, which, according to the IPO, “will provide a faster, cheaper and less complicated way for business to protect their trade marks”. The IPO has produced a comprehensive guide to the new system, in which it outlines some of the key differences to the standard opposition procedure within the Trade Mark Tribunal:
- Oppositions can only be based on a conflict with earlier trade mark registrations covering identical or similar goods/services; they cannot be based on other grounds, such as conflicts with earlier marks enjoying a reputation or earlier unregistered marks.
- Oppositions cannot be based on pending trade mark applications.
- Oppositions must be limited to a maximum of three earlier marks.
- If the opposition is based on earlier marks that have been registered for five years or more, proof of use of those marks must be filed with the notice of opposition.
- No further evidence can be submitted in the proceedings, by either party, unless the IPO grants permission to do so; it is expected that in the majority of cases decisions will be made without any further evidence being filed or hearings held.
From the opponent’s perspective, the fast-track opposition procedure is intended to simplify the opposition process in relation to the most frequent grounds of opposition relied upon, i.e. conflicts with earlier trade mark registrations, and thereby reduce costs. Whilst there is provision for an opponent to later request that a fast-track opposition be treated as a standard opposition, such that other grounds of opposition can be raised and further evidence filed, the IPO has indicated that it will only agree to this in exceptional circumstances. It is therefore important that considerable care be taken in determining whether to pursue a fast-track opposition or a standard opposition before opposition is filed.
From the applicant’s perspective, if an application encounters a fast-track opposition the applicant does not have the right to “opt-out” of the fast-track procedure, although any requests made by the applicant to submit further evidence in the proceedings are likely to be viewed more leniently by the IPO than requests by the opponent.
The successful party in a fast-track opposition will still be entitled to an award of costs in the proceedings, although due to the simplified procedure such an award is likely to be lower than the costs awarded in a standard opposition.
Having regard to the above, it will be apparent that there are a number of circumstances in which a fast-track opposition will be more appropriate than a standard opposition, such as when an opposition is to be based on a conflict with an earlier mark less than five years old which has not been put to genuine use. The IPO’s attempt to simplify opposition proceedings and reduce costs is to be applauded, although as mentioned above care must be taken before embarking upon a fast-track opposition to ensure that this is in fact the most appropriate route to take.