The UK Intellectual Property Office has announced a new fast track for oppositions, with the stated aim of providing a "procedure through which existing trade mark owners can oppose the registration of new trade marks at an affordable cost".
The fast track will run alongside the current opposition procedure, with the main differences as follows:
- Fast track oppositions are limited to claims based on earlier, identical or similar, registered trade marks. Oppositions based on (for example) trade marks with a reputation or unregistered rights will still be dealt with under the existing procedure.
- Fast track oppositions can be based on a maximum of three earlier rights.
- If any of the rights on which a fast track opposition is based have been registered for more than five years, proof of use of that right must be filed at the same time as the notice of opposition.
- The official fee for a fast track opposition is reduced to £100. It remains £200 for standard oppositions.
- The general right for parties to request an oral hearing is removed under the fast track, with hearings only at the Office's discretion.
The fast track option will be available from 1 October. At this stage, only the legislative Rules have been published; written guidance, a Practice Note and FAQs are all expected to be published towards the end of September.
The guidance should provide some details of the extent of savings envisaged by the Office. We anticipate that there will be some time and cost savings, but those will be limited against what is already a relatively efficient process.
Of particular importance will be the intended working of the proof of use rule. The administrative burden of preparing evidence of use up front may outweigh any possible time and cost savings for many clients.