Under a recent change in the UK Intellectual Property Office’s (“UKIPO”) examination procedure, the UKIPO will no longer issue refusals based on a prior conflicting CTM or UK trademark application or registration. Challenging the application will be the sole responsibility of the prior rights owner. In addition, while owners of UK trademark applications and registrations will automatically be notified by the UKIPO that a potentially conflicting application has been filed, owners of CTMs will have to pay a fee to “opt-in” to receive such notification. Accordingly, CTM owners will have to decide whether they want to pay the fee to “opt-in” to the notification process. Given that the fee is quite low, Day Pitney recommends that all CTM owners choose to “opt-in” to receive notification.
Under the new procedure, if an Examiner locates a prior conflicting application or registration, the applicant will have an opportunity to withdraw the application. The applicant may also choose to amend the application, perhaps by changing the goods and services description, in order to eliminate the conflict. If the application is maintained despite the fact that the conflict remains, the application will proceed to publication for opposition. As indicated, owners of UK applications or registrations will then be automatically notified but CTM owners who do not “opt-in” will not.
Day Pitney strongly recommends that all owners of CTM applications and registrations pay the fee to “opt-in” to be notified by the UKIPO. Confronting a potential infringing application at the earliest point possible usually increases a trademark owner’s leverage. Early intervention may also make the applicant more likely to settle because they have not yet invested a significant amount of money, time or emotion in the proposed mark. Also, in a litigation setting, it is often useful for a CTM owner to demonstrate that it contacted the potential infringer at an early date to try to resolve the matter.