The biggest change to hit the trade mark world in the United Kingdom since the introduction of the Community Trade Mark (CTM) will arrive on 1 October 2007. This change will affect all those applying for a trade mark after 1 October; however it will also affect those with existing trade marks. Owners of valid registered trade marks are likely to be the hardest hit by the changes.

Under the current procedures when you apply for a trade mark in the UK the application is examined, a report is produced and the application is either approved for publication or a provisional refusal is sent. The most common grounds for a provisional refusal are that there is a pre-existing mark or the specification does not meet the current requirements of the Intellectual Property Office (IPO).

If there is a pre-existing mark the applicant must either distinguish his mark in some way from the mark already registered or obtain the consent of the owner of the pre-existing mark to his application proceeding. Either way, the examination process is clear and there is a firm block on clearly infringing marks proceeding to registration.

From 1 October 2007 although the examination process will be the same, the results will be different. Rather than the application not proceeding until the application has been distinguished or consent from the owner of the preexisting mark being obtained, if the only objection is a similar or identical preexisting mark, the applicant will be notified of the pre-existing mark but if they decide not to take action, the application will proceed and be sent for advertisement.

When the IPO sends the application for advertisement it will also inform the registered owner of any pre-existing marks of the new application. However it will be up to the owner of the preexisting mark to oppose the application if they so wish.

How will the new process affect applicants in the future?

Generally it will mean that the application process is simpler. However it could result in an application progressing through to registration when there could be a possibility that this new mark could infringe an existing mark. As the owners of preexisting trade marks will have up to five years to commence invalidity proceedings against the new mark it is possible that even after registration the new mark could be challenged.

Under the present regime the most that the applicant of a new mark could lose is their application fee and fees paid to challenge any refusal by the IPO. However in the future, if the mark is registered and the owner starts to use the mark and it is infringing an existing mark, there is the possibility of damages, an accounting for profits and exposure to the costs of the owner of the pre-existing mark.

Therefore the applicants of new trade marks are going to need to take steps to ensure that their new marks are not going to infringe any existing marks not only before they start the registration process, but before they start to use the new mark. Generally this will only require simple research; however in some cases it will be essential that formal searches of the UK trade marks database are undertaken to see if there are any existing marks which may be infringed by a new application.

How will the new trade mark application process affect the owners of registered marks?

The new regime places the responsibility for protecting your trade marks on you as the owner of the mark. You should be informed by the IPO that an application is progressing which may infringe your mark. However you are reliant on the IPO informing you of the application to register a potentially infringing mark. This system is currently operated by Office of Harmonisation in the Internal Mark in respect of the CTM and notification can be rather 'hit and miss'. In addition the notification will only apply to UK applications, if you wish to be notified about applications for CTM's you will need to opt in and pay a fee, which will be £50 for three years.

In other cases it is possible that the letters that will be sent by the IPO will not reach a recipient that understands the implications of the letter. This could mean that no action is taken, or the recipient of the letter leaves it to late to file an opposition to the registration of the mark processing, potentially resulting in the need to take expensive proceedings to invalidate a new and infringing registered trade mark, potentially after harm as been done to your brand.

It is possible to set up a watching service over your marks. This is a service undertaken by specialist trade mark watchers that identify any marks which for which applications have been made which are identical or similar to your marks. These services usually identify applications soon after they are made and early enough to mark decisions as to whether action should be taken to prevent the application proceeding. The watch reports are quickly disseminated by the watching service to the person charged with undertaking the review. Therefore if an infringement is generated, it allows the trade mark owner to take steps to either prevent the mark proceeding to registration or to negotiate an arrangement with the new application so that they can proceed but with slightly different specification or under a co-operation agreement.

Conclusion

So that you are ready for the new procedures when they come into force we would recommend that you:

  • do not start using new trade marks without thoroughly investigating whether or not your mark will infringe a third party’s rights if you proceed to use them; and
  • establish a watching service on all your important marks so that you can be sure of being notified if there are any applications for trade marks which are either similar to yours or potentially infringe your marks.

Our trade mark team are experienced in undertaking research to ensure that an application for a new mark will not infringe the rights of third parties and can provide you with further information about trade mark searches and watches should you feel the need for added protection.