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New fast-track trade mark opposition procedure

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23/10/2013

The UK Intellectual Property Office (UK IPO) has launched a new “fast-track” trade mark opposition procedure.  The new procedure came into effect on 1 October 2013.  The intention is that the new procedure will lower the cost, complexity and duration of opposition proceedings for SMEs.

Why the need for a fast-track procedure?

Opposition rates have remained low, certainly when compared with the European Union trade mark office (OHIM), even though the UK IPO notifies registered trade mark proprietors of potentially conflicting applications.  The UK IPO is concerned that potential SMEs are deterred by the cost and administrative inconvenience of proceeding with an opposition.  It has also pointed out that, in practice, many oppositions are essentially assessments of similarity between marks and goods and/or services, making a paper-based opposition procedure feasible in practice.

Summary of the new fast-track procedure

The fast-track procedure can only be used by proprietors wishing to oppose trade mark applications on the basis of their own prior registration of identical or similar marks, in respect of identical or similar goods/services.  The procedure removes all evidence procedures from these cases which instead will be determined purely by reference to a notional comparison of the competing marks in relation to the goods/services listed in their specifications.

The aim is for cases to be resolved within six months, rather than the twelve to eighteen months which tends to be the case today.  The existing opposition process will run in parallel with the fast-track procedure and it will be possible for cases to be transferred from the fast track to the normal track where necessary, such as where the opponent decides that it needs to adduce evidence.  It is not possible to file a fast-track and normal-track opposition simultaneously

Opponents using the fast-track procedure are limited to basing their opposition on a maximum of three prior registrations.  If any of these registrations is more than five years old, evidence of use will have to be supplied at the time of filing the opposition.  Failure to file with proof of use will result in the automatic transfer to the normal track.

Applicants faced with a fast-track opposition will be able to indicate that, in their opinion, exceptional circumstances exist which necessitate the need to file evidence.  Assuming they do not do so, the opposition will proceed to a decision based on written submissions of the parties without the need for an oral hearing.

The official opposition fee for the fast-track procedure is £100.

Points to consider

The focus of the new procedure is SMEs but the procedure is not the exclusive preserve of SMEs.  Big businesses with an extensive trade mark portfolio are no less likely than SMEs to use the fast-track procedure.  After all, the new procedure is cheaper and quicker than the existing procedure and that can only be welcome.

Potential sticking points may be the need to file proof of use where the mark relied upon is more than five years old and applicants attempting to invoke exceptional circumstances to stop fast-track oppositions.

If you are interested in using the new fast-track opposition procedure or, as an applicant, are faced with a fast-track opposition, please contact your usual contact in the Walker Morris Trade Marks team.