From 1st October the process of registering a trade mark will be
streamlined so that applications will only be automatically open to
challenge, or opposition, for two months instead of three.
The changes are designed to make the process of trade mark
application run more smoothly for the 90% of applications that are
unopposed. That means that companies will have to work harder to
catch marks that conflict with their own before the registration
process is complete, said Lee Curtis, a trade mark specialist at
Pinsent Masons, the law firm behind OUT-LAW.COM.
"The change is designed to speed up the registration process, as
historically only around 10% of trade mark applications encounter
oppositions," said Curtis. "However, the change will make it all
the more important for trade mark owners to have trade mark watch
services in place to monitor the advertisement of applications and
give them an early warning of possible conflicting marks."
Though the automatic opposition period is reduced to two months
it can easily be extended to three with the filing of a form to the
UK Intellectual Property Office (UK-IPO). That process is free.
If someone opposes your trade mark application, the period in
which you can file a defence, or counter-statement, will also be
reduced from three months to two.
The deadline for filing defences when someone has applied to
invalidate a trade mark will increase, though, from six weeks to
two months. These changes were designed to harmonise the time
limits on filing defences between the two processes, said
Curtis.
As well as speeding up the process of registering a trade mark,
the new rules will re-introduce a degree of flexibility into the
process, allowing the UK-IPO some discretion in the case of missed
deadlines.
"At present if a counter-statement is not filed in opposition
proceedings, then the application is automatically deemed
withdrawn," said Curtis. "The UK-IPO feels that this is draconian
and the UK-IPO will now have 'discretion to direct otherwise' and
accept the filing of a counter-statement late. In many ways this
reverts to the practice in place around ten years ago."
The changes address previously identified problems in the
system. The UK-IPO this year introduced a fast-track application
process which reduced the waiting time for a trade mark to be
examined from a month to 10 days for a £300 fee.
Users complained that such a reduction was ineffectual without a
matching reduction in the period during which a trade mark can be
opposed. It is that period which has been shortened by a month.
Curtis said that the changes introduce a flexibility into the
process in some respects, but that users of the system will need to
be keenly aware of the shortened time periods specified for other
parts of the process.
"The guiding ethos of the new rules is to simplify and
streamline UKIPO procedures," said Curtis. "However, although the
new rules do introduce much more discretion on the part of the
UK-IPO in filing evidence and granting extensions of time, the
reduction in the time periods for filing oppositions and
counter-statements, mean that it is all the more important that
trade mark owners act quickly and decisively in challenging
potentially conflicting trade mark applications."
