Commencing October 1, 2007, the United Kingdom Intellectual Property Office ("UKIPO") will adopt a new procedure for examination of trademark and service mark applications. U.K. applications will no longer be refused on the basis of prior confusingly similar European Community Trademark or Service Mark ("CTM") registrations. Instead, if (but only IF) the owner of a CTM registration "opts-in" to the new system, the UKIPO will send a notice to the CTM registrant of the potentially conflicting U.K. application. The CTM registrant can then choose whether to oppose the application in the UKIPO.
In order to maintain the advantage of the rights granted by CTM registrations, we recommend that all our clients who own a CTM registrations opt-in to this system, so we will be notified if their CTM registration has been found to conflict with a U.K. application. The total cost (including our, our U.K. associate's, and the UKIPO's fees) to opt-in to the new system will be about $500 per CTM registration (regardless of the number of classes), which will remain valid for 3 years (proposals are pending to extend this to 5 years, possibly longer).
For those clients who have an international publication watch service for marks that are also CTM registrations, opting-in to the UKIPO system may not be necessary. It will, however, provide a back-up to the watch service, and a confirmation that the UKIPO Trademark Examiner believed that the U.K. application in issue was confusingly similar to our client's CTM registration.