Important changes to the procedure and administration of the UK trade marks system are expected to come into force on 1 October 2008. The changes follow a consultation exercise led by the UK Intellectual Property Office (UKIPO), in which Nabarro participated.
The changes are designed to make the system more accessible, flexible and efficient, and to remove duplication and inconsistencies. We report on some of the key changes below.
From 1 October, brand owners will have two months from the date of publication of a UK application to oppose it, with a free extension of a further month available on request. This split system is not dissimilar to that operated in the US.
Currently in the UK, brand owners are given a fixed three month period to oppose a conflicting application, which is in line with the procedure operated by the Community Trade Marks Office (OHIM). The change will accelerate the registration of trade marks that aren't opposed (around 90%), which is welcome news for applicants of new marks. But for existing brand owners, the change will require quicker decisions about whether or not to oppose a particular application. Filing the extension request will put the applicant on notice that an opposition is being considered, and a well-advised party would not wish to “show its hand” unless it has made a firm decision to oppose.
Brand owners that don't currently use an independent watch service should now re-consider this. A watch will provide notification of potentially conflicting marks before they are published for opposition purposes, and will buy brand owners more time to consider conflicts.
Failure to file counterstatement
Currently, failure to file a counterstatement in response to an opposition results in the application deemed to be withdrawn. The UKIPO considers this to be heavy-handed, and from 1 October the registrar will have discretion exercisable within six months to "direct otherwise", and consider a late defence.
POWER TO SET ASIDE DECISIONS
The new rules will also provide the registrar with a new power to set aside decisions in cancellation actions (again, exercisable within six months), where the proprietor can prove that it was unaware that its registration was under attack.
Concerns were raised during the consultation process that the power may lead to uncertainty, particularly for those seeking cancellation of a registration that is proving to be an obstacle to their own development of a brand. As a result, the registrar will be given the discretion to set aside decisions on specific terms and conditions. These could, for example, address questions of liability that might otherwise arise in relation to acts committed between the initial decision and the date on which the decision is set aside.
EXTENSION OF TIME REQUESTS
The new rules contain a right to seek a retrospective extension of time to deal with outstanding requirements or objections in connection with an application. This new right will only apply in matters between the user and the UKIPO (for example, in relation to deadlines for responding to UKIPO objections), and so long as the extension is requested within two months of the deadline passing.
Currently, the UKIPO requires formal certification to support claims of priority. From 1 October, formal certification will not be required, but the UKIPO will retain the power to request supporting documents.