This piece was first published in The Scotsman and is available online at www.scotsman.com/news/slow-take-up-of-fast-track-opposition-policy-1-3422411
Over the past years the United Kingdom Intellectual Property Office (UKIPO) has adopted a policy of becoming more 'user friendly' and has introduced procedures to make it easier, quicker and cheaper to register trade marks and to take or defend actions which come under its remit under the Trade Marks Act 1994.
One of the drivers for the above policy has been to make it easier for private applicants i.e. individuals or companies to deal direct with the UKIPO without the need to engage professionals – in particular trade mark and patent attorneys or solicitors. According to the UKIPO, some 63 per cent of all UK trade mark applications filed in the financial year 2013/2014 were by private applicants.
One such recent initiative by the UKIPO has been the introduction of a new fast-track trade mark opposition procedure on 1 October 2013. Key attractions are that the standard official opposition fee of £200 is halved to £100 and cases should be determined within six months instead of 12 to 18 months in standard oppositions. The fast track opposition procedure accordingly appears particularly attractive to individuals and SMEs.
Policing the Trade Mark Register and opposing third party marks is extremely important for trade mark owners. Since 2007 the UKIPO has no longer had the power to refuse new marks on the basis of earlier similar marks. This is the case even when the respective marks are completely identical and cover identical goods or services. Instead, the UKIPO operates a notification procedure whereby it informs the owners of earlier trade marks when a later conflicting trade mark is published for opposition purposes. The onus is very much on trade mark owners to oppose.
There are significant limitations to the fast track procedure. It is only available in straightforward cases where the marks and goods/services are identical or are similar (i.e. where there is a likelihood of confusion). The opponent is only able to base opposition on a maximum of three earlier registered marks. If there are further marks on which it wishes to rely and/or pending or unregistered marks, it must use the standard procedure. If opposition is based on a mark that has been registered for five years or more, the opponent must prove use of its mark when filing opposition instead of later as in the standard oppositions. Procedure is also simplified with no automatic right to file evidence and the official decision being made on the papers rather than the parties attending a hearing which is commonplace in standard oppositions.
The UKIPO issued a press release at the end of March stating that only 10 per cent of all oppositions had been filed under the fast-track procedure which appears somewhat disappointing.
The first 'fast track' opposition decision issued on 6 March 2014 was related to an application to register the trade mark e-Vap for electronic cigarettes opposed on the basis of on an earlier registration for the mark E-Vape (logo) covering identical goods. Not surprisingly, the opposition was successful and the applicant was ordered to pay the opponent costs of £800.
So why has the take-up of fast track opposition been so low? This may be because oppositions are rarely straightforward and it may not be sensible for an opponent to limit its case at the outset. In many cases, it will be appropriate to rely on pending applications and unregistered or so-called 'common law' marks. The requirement for filing proof of use upon opposition is also onerous and the necessary evidence is not always available by the opposition deadline.
Many opposition cases turn on the evidence the opponent can file. For example, the opponent may wish to demonstrate that its trade mark is entitled to 'enhanced' protection by virtue of longstanding use and reputation. A further important gap in the fast track procedure is that it cannot be used to oppose a mark which has been filed for dissimilar goods or services – even a well-known mark such as Coca-Cola could not be used as a basis for opposition against Coca-Cola for different goods in the absence of registration for the identical or similar goods.
Indeed, completely straightforward cases are rare and a trade mark owner may not be aware of the nuances and possible strengths and weaknesses of its case. This is where expert advice can be invaluable.
It will be interesting to see how the new fast track procedure pans out and whether the initial poor take-up of 10 per cent improves.