A significant development in UK trade mark opposition procedure comes into force today, 1 October 2013.

The UK Intellectual Property Office (UK IPO) is introducing a “fast-track” opposition procedure designed to lower the cost, complexity and duration of opposition proceedings for SMEs.

Need for change?

Since the UKIPO ceased blocking new applications which conflicted with existing rights during the examination process, opposition rates have stayed comparatively low at 4-5% (The corresponding figure at the European Union trade mark office (OHIM) consistently runs at around 15%). Even though the UK IPO still notifies trade mark owners of potentially conflicting applications when they are published, officials are concerned that the perceived cost and administrative burden of challenging is discouraging SMEs from enforcing their rights.

The fast-track system

The new system seeks to remove all evidence procedures from oppositions based on identical marks and identical goods/services, identical marks and similar goods/services and similar marks and identical or similar goods/services. These simplest cases turn purely on a notional comparison between the opponent’s and the applicant’s trade marks in relation to the products listed in their specifications.

The fast-track runs in parallel with the existing opposition process. When a trade mark owner opts to use the new system, they are limited to basing their opposition on a limited number of registered trade marks. If any of these registrations are over five years old, evidence of use must be supplied at the time of filing the opposition.

Thereafter the owner of the opposed application must confirm that they are defending the proceedings and can indicate whether they feel exceptional circumstances exist which require them to file evidence in support of their registration. The UK IPO anticipates that in most cases a fast-track opposition will then proceed to a decision on the basis of written submissions made by both parties without an oral hearing.

Pitmans SK comment

The removal of the UK IPO’s power to block trade mark applications on the basis of prior rights of their own volition did much to free up the application process. Trade mark applicants no longer have to spend considerable time and money filing submissions at the UK IPO to deal with perceived conflicts, when the owner of the earlier rights had not even indicated any concern with the new application.

Equally, the low rate of opposition in the UK is again a potential boon to SMEs looking to protect their rights and may well simply be an indication of good pre-filing searching practices avoiding conflict or a certain amount of apathy by rights holders. The potential downside of low opposition rates could be that a number of conflicting registered rights are building up on the trade mark register, which may lead to market confusion and cancellation action later on. This could ultimately lead to dwindling confidence in the strength of a UK trade mark registration and the degree to which this is a guarantee for freedom to use a mark.

Due to the requirement to submit evidence of use upon filing, the new fast-track procedure is optimised for only a narrow subset of trade mark registrations which are within their initial five year grace-period, where use is not required to retain validity. Whether the fast-track process is suitable will depend upon a case by case assessment of the degree of similarity between the trade marks, their commercial field and the availability of evidence of enhanced reputation for each party.

It is easy to foresee the UK IPO’s discretion to allow evidence in exceptional circumstance being the source of a great deal of conflict between parties to fast-track oppositions, as applicants seek to adduce evidence to bolster their defence.

Ultimately the traditional evidence based opposition remains available as a choice particularly suited for trade marks with a degree of reputation or for older registrations where sufficient evidence of use cannot be supplied at the outset. Even in these cases the strictly scale-limited costs awards available and the UK IPO’s determination to push proceedings forward, mean that this route is perfectly suitable for SMEs and larger corporates alike.

It remains to be seen whether the new fast-track scheme lead to any significant increase in the opposition rate in the UK and a “fire and forget” attitude to opposing arguably similar marks which might previously have been discounted.