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Acceleration of trade mark process is welcomed

A proposal to shorten the period during which trade mark applications can be opposed will make the Government's separate new fast-track trade mark process more appealing, one expert has said.03 Apr 2008

Advert: Trade Mark Services from £500 + VATOn 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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