As of October 2013, the UK Intellectual Property Office (UK IPO) is introducing a “fast track” opposition procedure, with the aim of reducing the cost and complexity of filing an opposition, whilst increasing the speed of the procedure. These amendments are intended to benefit SMEs in their ability to protect and enforce their trademark rights.
The new fast track procedure is limited to oppositions which are based on the strongest registered trademark rights. Namely, where a trademark is identical or similar to an earlier trademark and is to be registered for identical and/or similar goods and services. Where the fast track procedure is used, an opponent is only entitled to rely on 3 prior trademark registrations. This is in order to increase the speed and reduce the complexity of the standard opposition procedure. The implication is, that in order to utilise the fast track procedure, opponents will only be able to rely upon their strongest trademark rights.
The cost for filing an opposition under the fast track procedure will be reduced by £100. This is intended to allow SMEs and individuals a greater opportunity to seek to enforce their rights.
Under the fast track procedure, if the opponent seeks to rely on trademark rights that have been registered for over 5 years, they will still be required to submit proof use. However, the opponent will be required to submit such proof of use at the time of filing the notice of opposition.
There will be a limit on the amount of evidence that can be filed, to ensure that only the most persuasive evidence and grounds are relied upon. If either the opponent or applicant wishes to file any further evidence after the initial round, they will have to request leave. This will be given at the discretion of the Hearing Officer. The main deciding factors will include whether the further evidence will genuinely assist the decision, and whether the trademark applied for is of high commercial value to the party requesting leave.
In order to deter spurious appeals being sent to the Appointed Person, the new rules have introduced a fee for filing an appeal which will be non-refundable.
Impact for SMEs and individuals
The new procedure is intended to encourage SMEs and individuals to seek to enforce their trademark rights more readily, as the common perception is that the current system favours large, profitable companies.
The limit on the number of trademark rights and volume of evidence permitted should increase the speed and reduce the complexity surrounding the current opposition procedure. It is envisaged that the process will not become “bogged down” by opponents seeking to rely upon loosely similar trademarks, and unsubstantiated evidence.
However, there is concern that SMEs and individual applicants relying on a trademark that is over 5 years old, will be deterred from filing an opposition, rather than incentivised. They will lack the necessary resources to obtain the evidence/proof of use in the timescales that are provided.
Furthermore, the introduction of an appeal fee favours the party with “deeper pockets” and is seemingly counterintuitive to the essential aims of the fast track procedure, which is to purportedly to improve access to justice for SMEs and individuals.
Reliance upon the fast track opposition procedure will be optional, and its use will be dependent upon the circumstances of each case, and the grounds being pleaded. We will need to wait for the new system to have been introduced and tested to determine its popularity. For further details on the new fast track opposition rules, see http://www.legislation.gov.uk/uksi/2013/2235/made