Another initiative to help SMEs enforce their rights
The UK Intellectual Property Office (UK IPO) is simplifying the procedure to object to a trade mark application in a situation where it is a clear case of the new application being for an identical or similar mark and for identical or similar goods or services to an existing registration. In such a scenario, as of 1 October 2013, there will be a “fast track” opposition route.
Key proposed benefits of using the “fast track” system include the limited basis for the opposition (identical/similar mark for identical/similar goods or services), and that only three earlier registered trade marks can be relied on, meaning that the procedure will be significantly streamlined. In the event the earlier registered trade mark(s) are more than five years old, evidence that the mark(s) are still in use must be submitted at the time of filing the opposition. It is hoped that this up front evidential burden of proving older registrations are still in use will prevent spurious oppositions being filed. Generally speaking, it will not be possible to file evidence as part of the proceedings and a decision will be made from paper submissions only.
It is hoped that the straightforward and cost effective nature of the “fast track” system will encourage SMEs to take action when a new application is filed that conflicts with their registered trade mark rights.
In the event that the opposition is filed under the “fast track” system and it becomes apparent that this is not the correct forum, for example if additional grounds need to be added to the opposition, the Examiner has the discretion to transfer the “fast track” opposition across to the “standard opposition” procedure. The “fast track” route is not appropriate for matters where reputation and/or unregistered rights need to be relied on, or indeed any inherent matters are being argued.
Your trade mark attorney at Barker Brettell will be able to direct you on the most appropriate route, given the specifics of the case.
