On 1 October 2013, the UK Intellectual Property Office (UK IPO) introduced a new “fast-track” trade mark opposition procedure. The aim of this new procedure was to provide a simpler, more speedy and less costly process by which businesses can defend their rights against later-filed conflicting trade mark applications.
To use the fast-track route, parties need to meet certain conditions and criteria, otherwise they will need to follow the standard opposition route. In cases where an opposition has been filed under the fast-track route but the requirements are not met, the Registrar may convert the fast-track opposition into a standard opposition.
The main differences between the two opposition procedures are:
Timescale – A fast-track opposition is expected to be decided within six months in contrast to the typical 12-18 month duration of standard opposition proceedings.
Opposition Grounds – The fast-track route will only be available in straightforward cases where the trade marks and goods and services in question are identical or similar (i.e. where there is a likelihood of confusion), and where the opposition is limited to these grounds.
Costs – The official fee for fast-track opposition proceedings is half that of standard opposition proceedings. However, to avoid parties choosing the fast-track route purely for cost reasons, the IPO has introduced a similarly reduced fee in standard opposition proceedings where the grounds pleaded are restricted to those allowed under the fast-track procedure.
Opposition Basis – Under the fast-track procedure, opponents will be able to rely on a maximum of three earlier registered marks. Right holders wishing to rely on a greater number of registered marks and/or on pending or unregistered marks, will be obliged to opt for the standard opposition procedure.
Proof of use – Where an opponent relies on a trade mark that has been registered for five years or more at the date of publication of the opposed mark, it must provide proof of use of the mark. Under the fast-track procedure, such proof must be filed at the same time as the notice of opposition (as opposed to later in the proceedings under the standard opposition procedure).
Evidence – Neither party in fast-track proceedings has the automatic right to file evidence. Whilst either party may request leave to file evidence, this will only be permitted in exceptional circumstances.
Hearings – In most fast-track cases, arguments will be made only through written submissions and a decision will normally be made based only on the papers. Whilst parties may request a hearing, hearings will only be permitted in exceptional circumstances. This new procedure will likely prove useful to businesses and individuals seeking to enforce their trade mark rights. It should lead to time and cost savings in straightforward and clear-cut cases where the trade marks at issue and relevant goods or services are identical or highly similar and where the rights relied upon by the opponent have not been registered long enough for proof of use to be required. However, where such rights have been registered for more than five years, the new procedure may prove less practicable owing to the requirement to file proof of use at the time of filing the opposition.