Partner Article

Trade Mark Examination - Markedly Different

With Watson Burton LLP Law Firm

Obtaining a trade mark registration is the best way to protect intellectual property rights in a name and the goodwill in a valuable brand. The UK Intellectual Property Office published a consultation document in February 2006 to assess whether the practice of examining new UK trade mark applications, for conflict with earlier and similar registered marks, should continue. Until recently, in the event of a conflict, the Examiner would refuse an application based on what are known as the ‘relative grounds’.

Refusal on relative grounds could potentially be dealt with by an applicant in several ways, all of which invariably increase the time and expense involved in obtaining the registration. They include:

• obtaining consent from the owner of the earlier mark/s;
• providing evidence of a qualifying period of ‘honest concurrent use’ with earlier marks;
• obtaining revocation of registered marks for non-use; and
• amending the specification of the new application so as not to conflict with earlier marks.

On 1 October 2007 the Trade Marks (Relative Grounds) Order 2007 came into force. From that date, Examiner’s objections will now be confined to the ‘absolute’ grounds. This means applications may fail, for example, because they:

• lack distinctiveness;
• relate to the characteristics of the goods; and/or
• have become customary terms.

If these or the other strict requirements of the Trade Marks Act 1994 are not met, the application will be refused.

Under the new rules, the Examiner will no longer be required to refuse an application by reference to existing trade mark applications or registrations. Instead, an applicant will be apprised of the existence of any earlier marks, the owners of which will be notified of the application, giving them the opportunity to object, if desired. The changes mean that owners of existing UK trade marks will now have to be proactive in relation to new applications and oppose any which they perceive as a threat.

European Community trade mark (CTM) owners and owners of international trade marks protected in the UK will not be notified automatically of potentially conflicting applications. Payment of a fee will be required to enable them to ‘opt in’. The changes are intended to streamline the UK trade mark examination process and bring its practice broadly into line with the system used to examine CTMs. It is hoped that the new regime will allow parties to find commercial solutions to any potential conflicts, whilst cutting down the time and expense involved in the application process.

If you have any queries relating to this article, please contact Sarah Barratt at Watson Burton LLP by emailing sarah.barratt@watsonburton.com.

This was posted in Bdaily's Members' News section by Ruth Mitchell .