The United Kingdom Intellectual Property Office ("UKIPO") has adopted a change in its examination procedures which may have consequences for those who hold national or Community Trade Marks ("CTMs") they wish to protect and enforce in the UK. In this alert we provide our recommendations for how you may wish to respond to this change.
The Change Itself
Traditionally, when reviewing a new trademark application, the examiners at the UKIPO have looked at all existing UK and CTM registrations, determined whether any conflict with the new mark existed and issued a refusal of registration when occurred. Accordingly, owners of pre-existing marks have been protected by the UKIPO and have, in many instances, not had to take steps of their own to block registration of new and conflicting marks.
As of October 1, however, the UKIPO no longer refuses applications on such "relative grounds," leaving it to the owners of existing marks to file opposition proceedings against such applications if they wish to block their registration. Furthermore, while the examiners at the UKIPO will still provide notice to the holders of UK national applications and registrations (whether filed directly through UKIPO or as part of an International Registration under the Madrid Agreement or Protocol) that a new and potentially conflicting mark is under examination, such notice will not be provided to the holders of CTMs unless they expressly "opt in" to a notification procedure and pay a £50 fee for each mark.
What it Means for You
Because of the tremendous cost savings provided by the Community Trade Mark system, most companies obtain CTM registrations for their marks and use them to protect the marks throughout the 27 countries of the European Union, including the United Kingdom, instead of seeking national registrations in each of those 27 countries. If you follow this common, and otherwise very advisable practice, you will no longer receive notice from the UKIPO of potentially conflicting marks under application in the UK unless you choose to "opt in" and pay the annual fee, or take other action to obtain notification. And regardless of the form of registration you may have that applies to the UK, and whether you obtain notification or not, it will now be up to you to oppose the mark if it survives examination on other grounds and is published for registration by the UKIPO.
What To Do: Our Trademark Tip for You
While many CTM owners are being advised to "opt-in" so that they receive notification of pending UK applications of interest, our suggestion is instead to consider using a broader CTM-wide watch service to give notice of any applications of interest as they reach publication. There is still some doubt as to the criteria to be applied by UK examiners in identifying potentially conflicting marks, and it is possible that the notification they provide to those who "opt in" may not occur until about the time of publication in any event. So an examiner may not consider your mark similar enough to provide you with notice, or may provide notice to your CTM agent more slowly than a watch service might provide. And of course, your £50 fee only covers your mark in the UK — you won't receive notice of marks filed elsewhere in the European Union unless you have a separate watch system in place.
In our view, a better way to proceed is to employ a community-wide trademark watching service to monitor marks as they come up for publication anywhere in the European Union. Companies such as Thomson Compumark, and European firms such as Gevers, provide trademark watching services that can cover a single mark throughout Europe for as little as about $200 per year. Armed with such watch reports and our assistance in considering them, you can be advised not only of UK applications, but of all pending applications reaching publication for opposition anywhere in the 27 Member States of the European Union. While you will still need to take affirmative action to challenge the registration of those of concern to you, you can receive consistent notice across all jurisdictions of the marks that have cleared review and will be registered unless you act. This gives you a broader picture, while still providing time to oppose the marks of interest.