On Monday a new
fast-track trade mark application system will come into effect,
reducing the waiting time for the examination of a trade mark from
over a month to 10 days.
That move was criticised as being ineffectual, though, while the
period during which an application can be opposed remained at three
months and was unchanged by the payment of the £300 fast track
fee.
Now, though, the UK Intellectual Property Office (UK-IPO) has
proposed slashing that time in half for the 90% of applications
which proceed unopposed.
When someone applies for a trade mark it is examined. This can
take more than a month, and it is this part of the process which
the fast track scheme will speed up.
After that, the trade mark is published and left dormant for
three months, waiting for objections from anyone who believes that
it infringes rights they hold through an existing trade mark.
"More than 90% of marks are registered without receiving any
opposition and we would like to speed up the registration of these
trade marks by reducing this dormant period from three months to
six weeks, bringing the time for registering an unopposed mark down
to around 4½ months," said the UK-IPO, proposing a new system.
Lee Curtis is a trade mark expert at Pinsent Masons, the law
firm behind OUT-LAW.COM. When the fast track programme was
announced, he said: "I don't know that [the fast track option] will
be a huge success because an application still has to go through
the whole process – including a three-month advertising process –
which is unchanged by this fast-track option."
He said that the new proposal will change that, though. "The
UKIPO's proposals seem logical. Only a small proportion of trade
mark applications are actually opposed and potentially enabling the
vast majority of applications to be processed a month and half
quicker than under the current system are to be applauded," he
said. "Also the proposals would mean that the new 'fast track
application system' will be much more attractive to
applicants."
Under the proposed new scheme unopposed applications will
progress after six weeks. Any opposition, though, will
automatically increase the waiting period to the full three months,
the UK-IPO said.
"In order to ensure that existing trade mark owners are
protected we will introduce a new, free and simple form allowing
them to extend the opposition period back to three months if they
are considering an opposition," a UK-IPO statement said.
Curtis said that the new period is not short by international
standards. "Although some might be alarmed by the reduction of the
opposition period from three months to six weeks, it should be
remembered that in many states the opposition period is much
shorter," he said. "The US is an apt example. There, the
opposition, although extendable, is only 30 days."
Curtis did say, though, that any change will have to lead to a
change in the way that companies deal with applications.
"What the new proposals of shortening the opposition period mean
is that it will be all the more crucial for trade mark owners to
put in place trade mark watching services, so that they get an
'early warning' of conflicting applications on the Register," he
said.
The new proposal forms part of an ongoing consultation on the
trade mark rules. The consultation is open until 26 May.
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