The UK Intellectual Property Office (“UKIPO”) has significantly changed its trade mark application process.

From 1 October 2007 the UKIPO examiners will no longer prevent registration of a new trade mark application on relative grounds (namely, the existence of an earlier relevant registration or application for a trade mark that is valid in the UK). The examiner will search for conflicting earlier rights and will notify the applicant of any relevant rights. The applicant will have two months to deal with the citations.

At the expiration of this period, the examiner will notify relevant earlier rights owners (‘EROs’) of the new application. Owners of UK or International marks will be automatically notified. Owners of Community trade marks have to ‘opt-in’. To opt-in the CTM owner must apply to UKIPO and pay a £50 fee for each mark. The opt-in lasts for three years and can be renewed.

UKIPO will notify the EROs when the new application is advertised. The ERO may then oppose the application in the usual manner. Other rights owners who have not been notified of the application may also oppose.

Trade mark owners are therefore advised to be much more vigilant and ensure that they use a good watching service for UK applications. They must be ready to oppose conflicting applications and should consider ‘opting-in’ if valuable marks are protected in the UK only by a Community trade mark.