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UK Trade Marks easier to get after October 2007

What is changed?

From 1 October 2007, the UK Intellectual Property Office (UKIPO) will no longer refuse an application for a national UK trade mark registration on the basis of prior conflicting marks during its examination process.  Instead, the UKIPO will allow a UK trade mark application to proceed as long as the mark is inherently registrable (e.g. it is distinctive).  Although the UKIPO will still do a search of the existing register for possible prior conflicting marks, it will only notify the relevant prior mark holders of the new trade mark application; it is then up to the prior mark holders to file formal opposition if it objects to the registration of the new trade mark application.

Why the change?

The new procedure is very similar to that used under the Community Trade Mark system (which is a pan-EU registration of trade marks covering all EU countries including the UK, and is administered by the Office of Harmonisation in the Internal Market (OHIM) based in Alicante).  Many have commented that the existing UK system (which rejects an application if the Examiner finds a prior conflicting mark) makes it harder to obtain a national UK trade mark registration than a CTM, and the worry is that the UK will slowly lose its popularity unless it is more aligned with the CTM system.

What does this mean to you?

Existing Brand Owners - If you are an existing trade mark owner, this means you can no longer rely on the UKIPO to be your first line of defence to defeat potentially conflicting new trade marks filed by third parties.  You should therefore ensure that you have your own “trade mark watch” set up and be ready to oppose the application where appropriate.  A “trade mark watch” can be very easily and cost effectively set up and Laytons will be happy to arrange this for you.  We will also be happy to offer you practical advice when you are considering whether or not to formally oppose a third party’s new trade mark application.

New Brand Owners - If you are developing a new brand, this means the dilemma of choice between a UK trade mark and the CTM is now lessened.  It is likely that your UK trade mark application will be more readily accepted by the UKIPO at the initial stage, and will only be opposed if there is a real likelihood of conflict in practice with an earlier mark.  

In the long run, we also expect to see more cancellation actions to challenge registered trade marks where prior mark owners had missed the opportunity to oppose the first time round.

For PDF version of this focus sheet click here