UK Trade Mark Registry will no longer automatically refuse applications based on relative grounds objections.
The United Kingdom has been one of the jurisdictions where trade mark examinations are conducted prior to the publication and acceptance of a trade mark application.
The examinations have taken the following forms:
- Absolute grounds, where the marks are examined on whether they are distinctive and not descriptive
- Relative grounds, where earlier marks which are identical or similar to the mark being examined are cited against the application proceeding.
New Rules and Procedure As of 1 October 2007, the UK Trade Mark Registry will no longer automatically refuse trade mark applications based on relative grounds objections. For an application after 1 October 2007, the Registry will conduct searches to identify earlier marks and will inform the applicant of these prior marks, but will not provisionally refuse the application. Upon receiving such information, the applicant must decide whether to proceed with the application with the knowledge of these prior marks.
If the applicant decides to pursue the application despite the prior marks, the Registry will notify the proprietors of these earlier marks of the application. Proprietors that are UK Registrants or International Trade Marks (UK designation) Registrants will be automatically notified. A Community Trade Mark (CTM) Registrant may choose to opt in for notification.
The notification will allow such third parties to decide whether to oppose the application during the opposition period. The opposition proceedings remain unchanged. The application will have to be published, and oppositions can be filed within the three-month opposition period which follows publication. If an applicant chooses to proceed with the application despite the marks revealed in the searches, there may be cost implications at the opposition stage, if an opposition is filed.
Opt-In for CTM Registrants
CTM Registrants and International Registrations designating the CTM will not be automatically notified of a later filed application in the United Kingdom. If these registrants wish to be notified, they must opt in for notification. There is fixed fee and procedure for doing so. Where there is an opt-in, the registrants will be notified of the later filed applications if their marks are revealed in the Registry’s searches.
Ramifications for Pending UK Applications
After 1 October 2007, a pending UK application which currently faces relative grounds objection, can have the objection waived and the application proceed to publication. Any proprietor of an earlier mark (either a UK Registration, International Registration designating the United Kingdom, or CTM with opt-in) cited in the examination stage will be informed of the application and will be provided with the opportunity to oppose the mark during the opposition period.
Ramifications for CTMs
If protection is via a CTM, and there is no watching brief for the mark, it is advisable to opt in for notification, so that later filed marks may be opposed if necessary. Where there are watching briefs, this cause of action may still be advisable, since the searches are conducted by examiners of the Registry experienced in this area.
Call to Action
If necessary, CTM Registrants can opt in now or at any point in the future. The first opportunity to opt in is 1 October 2007. However, if instructions to opt in are filed by 20 October 2007, notification will be received accordingly, before the first publication under the new legislation.