Introduction

Changes are afoot at the U.K. Patent Office.

A recent flurry of new consultations covers a broad swathe of practice and procedure. Some of the more mundane include the consolidation of forms for the recordal of changes to all types of IP rights and the improvement of electronic filing. Other changes proposed, however, are more complex and far-reaching.

In particular, a new consultation is taking place on the future of relative grounds examination. Unlike OHIM, the U.K. Office examines applications for conflict with prior marks and has the power to refuse applications on the basis of such conflict even where the earlier right owner does not oppose.

This is the second such consultation; the first, several years ago, concluded that the practice added value for brand owners and should continue. The issue has risen again, however, amidst concern that the practice creates disparity with OHIM and results in refusals based on registrations which could not be asserted in oppositions due to non-use.

The future of relative grounds examination, this time, is anything but certain. Abolition of relative grounds refusals (if not relative grounds examination altogether) would make the U.K. Office more competitive with OHIM. The growing number of CTMs with unduly broad specifications has increased the perception of unfairness associated with refusals based on registrations that may be vulnerable for non-use, resulting in rejection or costs for consent or cancellation.

On the other hand, relative grounds examination is but one timber in a complex structure designed to protect U.K. brand owners. Its abolition would necessitate careful review and revision of the Trade Marks Act in ways probably not fully envisaged at this stage. It might also include the repeal of the statutory defence to infringement arising from ownership of a registered U.K. mark. This provision has no equivalent in the CTMR and its loss would remove one of the important advantages of U.K. national registration.

Those who wish to respond to the consultation should download the papers from http://www.patent.gov.uk/about/consultations/relativegrounds/index.htm.

Any change is unlikely to be implemented before next year. Hopefully discussions over the course of this year will drive home the ramifications of change and ensure that any future course is plotted with care.