Currently, when the UK Intellectual Property Office ("UK IPO") examine an application for trade mark registration they conduct a search of the official trade mark database. This is to identify pending and registered trade marks which they consider are similar and may conflict with the mark being applied for. If such a mark is found (a "prior mark") the UK IPO raise an official objection and will not accept the application unless the objection is overcome.
However, this is set to change. As of 1 October 2007 the UK IPO will no longer refuse an application on the basis of a prior mark.
Instead, the trade mark applicant will be notified of any prior marks identified by the UK IPO's search. The holder of any such prior marks will also be notified. This gives the applicant the opportunity to withdraw or amend their application on the basis of the search results. It also gives the holder of a prior mark the chance to file an opposition against the application.
Holders of UK trade mark registrations will automatically receive such notifications. However, holders of CTM (Community Trade Mark) registrations will need to "opt in" to the notification service.
This sounds like a simple change but it has implications for businesses and how they monitor and enforce their trade mark rights. Importantly, it highlights that businesses should not rely on the UK IPO as a "gatekeeper" who will stop conflicting marks from achieving registration. This task now falls square to trade mark owners and it is expected that the number of trade mark oppositions filed in the UK will increase as a result of the changed practice.
From a practical perspective your business may need to consider reviewing your trade mark portfolio to make sure it is up to date. This will help to ensure that any notification will reach you or your trade mark advisor. Such a review could include checking your recorded details, including your or your trade mark advisor's address, and that any company name changes or transfers have been looked after. In addition, a review may identify whether you hold any CTM registrations and whether your business will need to "opt in" to the UK notification service.
From a strategic perspective this is a good time to reconsider a passive approach to trade mark monitoring and enforcement There are various options available that would make your approach more pro-active – such as maintaining a trade mark watching search. Taking steps to look out for your trade mark rights may be cheaper and easier than you expect – and could protect your trade marks in the long term.