proposal for important change to trade mark law

Following a consultation with users and professional representatives, the UK Trade Marks Registry (TMR) has decided to change fundamentally the way it examines applications. Until now, it has refused applications for two main reasons: the mark does not comply with registrability criteria or there is a confusingly similar mark covering similar goods or services.

It is proposed to remove the second reason for refusing - if you want to apply to register NIKE in relation to shoes, the TMR will not stop you! Earlier this week, proposals for how and when the change would be made were published. It is due to take effect in October 2007.

how the change will work

Currently, the TMR searches earlier trade marks, raising an objection if it discovers similar prior marks covering similar goods or services.

Following the change, a search will still be performed, but the Examiner will notify the Applicant of the results for information purposes only. The Examiner will, however, also notify the owner of any earlier UK trade marks (including UK designations of International Trade Marks), giving them the opportunity to object to the application. The owners of earlier Community Trade Marks (CTMs) will be able to opt to be notified, but only on payment of a fee.

Applications will be published for opposition purposes about two months after the search results are provided. This period will be extendible to allow for withdrawal or amendment if, having seen the results, the applicant decides this is wise.

our comment

Now that the TMR is giving up its role as ‘guardian’ of the Register, trade mark watching services will be more important than ever in order to prevent registration of later similar marks. We do not yet know how diligent Examiners will be when conducting searches in future. At the moment, they often err on the side of caution and include marks in their Reports that we are able later to ‘persuade’ them are not relevant. This may change under the new regime. It will be important for Trade Mark Owners to act on TMR notifications, objecting where appropriate (bearing in mind the ‘double jeopardy’ rule highlighted in the recent Special Effects case). Although the wording of the legislation suggests not, it is possible that a notification will start the five year period within which owners will be deemed to have ‘acquiesced’ unless they have objected.

We consider it is likely that more oppositions will be filed because the TMR will not be weeding out obviously conflicting marks. It may be good news for applicants of new trade marks, who will no longer face prior rights objections from the TMR. The owners of earlier trade marks will now have to spend money filing oppositions if they have a concern over an earlier trade mark and this should mean that only genuine objections are the result of opposition proceedings.