The change follows consultation into the grounds for trade mark
refusal in the Trade Marks Act of 1994 and will apply to all
pending applications as well as to all future ones.
Until now the Registry has been able to object to trade mark
applications if it found previous mark registrations or
applications which seemed to conflict with the trade mark applied
for by a person or company. Any other person could also object on
those grounds.
In an effort to put its policies more closely in line with those
of the Community Trade Mark system in Europe, though, the Registry
has changed its approach.
"The Registrar of Trade Marks will no longer refuse to register
a new trade mark application in the face of an earlier conflicting
trade mark unless the owner of the earlier mark successfully
opposes the new application," said the Registry. "The Registrar’s
examiners would, nevertheless, still conduct a search as part of
the examination process and would inform both the applicant for
registration of the results of the search and also the owners of
earlier conflicting trade marks identified in it if, and when, the
application proceeds to publication."
The Registry said that the new approach is likely to be more
commercially fair than existing ones. "The new registration regime
means that the assessment of conflict with earlier marks becomes a
more market place based assessment (with proprietors opposing if
they consider there to be a conflict) rather than the mechanistic
paper based assessment that currently takes place," said its
consultation document. "This requires that the persons permitted to
oppose or seek the invalidation of a registered mark be limited to
those who are in the position to assess the real economic effect
that the new trade mark may have on the earlier one. This is
plainly a judgment for the proprietor of the earlier mark to
make."
A more controversial justification for the changes is that it
will make it harder for third party companies who are rivals to a
trade mark applicant blocking the application for unrelated,
tactical commercial purposes.
"To allow anyone to oppose or seek to invalidate a trade mark
registration on the basis of a third party’s earlier trade mark or
right would…permit the use of opposition and invalidation
proceedings for tactical purposes, the result of which would be to
expose the applicant to a greater risk of proceedings," said the
document.
Trade mark specialist Lee Curtis of Pinsent Masons, the law firm
behind OUT-LAW.COM, said that this was in fact not a common
problem, and that preventing third party challenges could damage
the trade mark system. "The Registry's comment on 'tactical
oppositions' seems misguided, as such oppositions did not
appear to be a particular problem under the old system," said
Curtis.
"It would seem unfair that an
application could proceed to grant which is technically
invalid because a prior rights owner is not prepared to enforce
their rights in opposition proceedings," he said. "If
an application is invalid it should be challenged, regardless
of whether the challenger is the prior rights owner or not."
The Trade Marks Registry said that it would still conduct its
search of previous marks and inform any conflicting mark holders of
the new application, but would not object on their behalf. Though
the consultation is still open until March, the Registry has just
published its second version of its plans and major changes are not
expected.
