• UK-IPO Fast-Tracks Changes

    The UK-IPO, already one of the most efficient IP offices in the world, is set to become even speedier in April 2008, when a new trade mark fasttracking procedure is launched.

    From 7 April 2008, applicants can request expedited examination of U.K. trade mark applications for an additional fee of £300. Fast-track applications will be examined within 10 business days of filing. If no objections are raised, fast-tracked applications will proceed to publication and the statutory 3-month opposition term. In the absence of objections or oppositions, a fast-track application may be registered within 5 months or less.

    Fast-tracking can only be requested on filing and will not apply to series marks.

    Fast-track is likely to have limited appeal in a jurisdiction where examination normally occurs within a month. Nevertheless, the procedure can provide essential extra speed where urgent protection is needed due, for example, to an imminent launch or potential thirdparty conflicts.

    Undefended Invalidity Actions

    The IPO has amended its procedures so that undefended invalidity actions against U.K. registered trade marks are granted by default.

    Previously, a challenger had to prove invalidity, even if the registered proprietor did not defend. This normally meant incurring costs in evidence preparation.

    Under the new practice, a U.K. registration will be declared invalid automatically where a proprietor fails to respond to an action, provided the grounds pleaded would, if true, form a legal basis for invalidation. The IPO will send notice to the proprietor’s address for service giving 14 days for submissions or a request to be heard on the proposed default judgment.

    The change will result in substantial costsavings in undefended invalidity actions before the IPO. This is in contrast to the OHIM procedure where costs are still front-loaded, with evidence falling due when the action is filed.

    A protective measure is planned to allow the IPO to set aside default decisions in appropriate cases, such as where a proprietor did not receive actual notice of the action. Details are still under consideration, however, and set-aside may not be available where it is sought very late or where third parties have acted in reliance on a registration having been declared invalid.

    Consequently, for brand owners it remains critical to update the U.K. Register promptly with changes of address and attorney. The CTM Register should be likewise updated to avoid OHIM proceedings being undertaken and concluded without a proprietor’s knowledge or involvement.

    Costs in Undefended Actions

    Until recently, parties who won an undefended opposition, revocation or invalidity action before the UK-IPO were entitled to an award of costs.

    As part of its campaign to encourage parties to settle disputes, however, the IPO recently changed its cost rules so that parties who do not give prior notice of an intended action will lose their entitlement to costs if the rights are withdrawn or surrendered.

    Where possible, sending prior notice is often not only good practice for the protection of costs awards, but can also save parties money. It may secure an early withdrawal or surrender and thus enable a challenger to avoid the cost of preparing an action at all.

    The IPO recognises that it may not always be possible to send reasonable prior notice, particularly in oppositions where the deadline is inextensible or in revocation actions where it is commercially vital to get the action on file. In such cases, the IPO has a discretion to consider granting costs despite the absence of notice.

    It is arguable whether this measure was really appropriate, since an applicant or proprietor may be taken to have assumed the risk of a challenge and resulting costs order. After all, the mere existence of registered rights causes others to incur costs in legal advice on their relevance in searches. Nonetheless, the new rule is in line with the IPO’s efforts to encourage mediation and settlement, and its introduction is no surprise.

    Questions?

    We are happy to advise on the implications of the changes either generally or for specific cases. Please contact the trade marks team at Jenkins.