• IN THE UK OFFICE

    RINGING IN THE CHANGES TO RELATIVE GROUNDS EXAMINATION

    As reported in our Spring issue, from 1 October 2007 the UK-IPO will no longer refuse U.K. trade mark applications and Madrid designations based on conflict with prior rights, except where a proprietor successfully opposes. We summarise the new procedure below.

     

    THE NEW REGIME

    • Under the new regime, applications will still be examined for conflict with prior rights. However, applications will not be refused on that basis at the examination stage.

    • Applicants will be notified of marks that the Registrar considers conflicting. They will have two months to withdraw, make amendments or submit that the prior marks were raised in error. Normally only a single round of submissions will be entertained.

    • Examiners are not obliged to reply to submissions, but may waive citations if persuaded they were wrong.

    • The two-month response term may be extended where a cited mark is not yet registered, or where there are other reasons why delay is appropriate.

    • After the two months, or earlier on request, an application will be published for opposition purposes. The Registrar will notify the publication to proprietors of cited U.K. registrations and applications and IRs (UK), and will also notify proprietors of cited CTMs or IRs (CTM) who have formally opted in to the notification procedure. Prior right owners may choose to oppose.

    • Only the owners of prior rights may invoke those rights in opposition to marks published on or after 1 October 2007. This marks a departure from the former practice whereby opposition based on prior rights could be filed by anyone, including licensees and unrecorded assignees. It brings the UK-IPO into line with OHIM practice, but some flexibility should be maintained as the rules are expected to be amended to allow licensees and commercially-related entities to intervene in oppositions. Amendments are also expected to define “proprietor” so as to include beneficial owners. The primary legislation is also to be amended to permit licensees to apply for invalidation.

     

    TRANSITIONAL PROVISIONS

    • Currently pending applications blocked by prior rights will be allowed to proceed under the new procedure from 1 October 2007. The UK-IPO will suspend applications until 1 October for this purpose.

    • Refusals issued before 1 October 2007 will stand unless an appeal succeeds or the application is otherwise remitted back to the examiner, in which case the new practice should allow the citations to be waived.

     

    NOTIFICATIONS AND OPT-IN

    As of our press date, details of the new notification and opt-in practice were still under consultation. However, the system is expected to operate as follows:

     

    • Owners of prior U.K. registrations and applications and IRs (UK) will automatically be notified of the publication of potentially conflicting later U.K. applications and IRs (UK). Opt-in will only be necessary for the owners of CTMs and IRs (CTM) (including applications) who want to receive such notices. It is most likely to be of interest to businesses who do not subscribe to commercial watching services.

    • Opt-in is on a per-mark basis. The opt-in fee will be £50 per mark for 3 years, regardless of the number of classes covered.

    • A proprietor may opt in any time after a CTM or IR (CTM) is filed.

    • For U.K. marks, notifications will go by mail to the U.K. or E.U. address for service. For IRs (U.K.), notifications will go by mail to the U.K./E.U. address for service, if appointed, or, if there is none, to the professional representatives, wherever they are. If there are no representatives, notification will go by mail to the proprietor. Notifications will not be sent to WIPO.

    • For CTM and IR (CTM) owners who have opted in, notifications will go to one or two email addresses of their choosing, anywhere in the world, which need not be those of an address for service.

    • In future, owners of U.K. marks and IRs (UK) should also be able to receive notifications by email, but that is not expected in the early days of the system.

    • CTM owners with U.K. seniority claims based on now-lapsed U.K. registrations will not automatically receive notifications. They will have to opt in to the system.

    • Opting in should be possible from 1 October 2007.

    • Proprietors may opt out of automatic notifications, or may opt out after opting in if notifications are no longer required. A simple written request to the Registrar is all that is necessary, and there is no fee.

    We would be pleased to advise on opting in or any other issues relating to the new procedures. Please contact the Trade Marks Group at Jenkins.