UK: The Trade Mark Registry Sheds Further Light on Proposed Changes to UK Trade Mark Systems

In August 2006, the United Kingdom Trade Marks Registry indicated that as of October 2007 it would change the system of examining UK national trade mark applications and will no longer object to such applications on the basis of prior rights. The 'full relative rights examination system' will be abandoned and it will be solely up to the prior rights owners to oppose applications when they are advertised for opposition purposes.

The UK trade marks system will move towards an advisory search system similar to that operated by the Community Trade Marks Office. Applicants will be advised of possible conflicting prior applications or registrations and it will be up to them to decide whether to push on with the application. Further, prior rights owners will be notified of later filed conflicting applications and it will then be up to them to decide whether to oppose such applications when advertised, after assessing the situation commercially.

In late December 2006, the Registry issued a further consultation document which 'fleshed out' some of the proposed changes. Although the latest consultation document is still subject to change and is open to comment until 12 March 2007 by interested parties, it is envisaged that the UK system will move towards the system laid out in the latest consultation.

The Registry has indicated that only the proprietors of earlier applications or registrations under Sections 5(1), 5(2) and 5(3) of the Act and earlier rights under Section 5(4) will be able to launch oppositions under these sections of the Act. Sections 5(1) to 5(4) enshrine the relative grounds of opposition under the Act.

Although 'any person' will still be able to oppose applications on the basis of absolute grounds, such as a lack of distinctiveness in the mark concerned or bad faith, the changes proposed by the Registry are an important change to the present system where 'any person' may launch an opposition on relative grounds.

The Registry has explained that the rationale behind this change is that the ethos of the proposed changes are for prior rights owners, and not the Registry, to assess whether a conflicting application truly is a commercial threat to their business and the best people to assess such a threat is the prior rights owner.

The proposed change also in the Registry's view avoids vexatious oppositions from traders who do not directly own any rights in the action using the opposition system 'tactically'.

The proposed change seems an inevitable consequence of the Registry's desire to bring the UK system into line with that of the Community Trade Marks system.

The Registry has indicated that the proprietors of earlier Community trade mark and International trade mark registrations covering the UK will not be automatically notified of a later filed UK application under the notification system. Only the proprietors of earlier UK national applications and registrations will be notified under the system. UK rights holders will have the right to 'opt out' of the notification system and CTM and International rights owners can 'opt in' to the system on payment of a fee.

The Registry says the reason for treating CTM and International rights holders differently under the notification system compared to UK rights owners is that the CTM and International rights owners have not paid for the notification service in contrast to the UK owners. Further, a CTM rights owner may have no interest in the UK, given that a CTM registration automatically extends to the whole of the EU. Further and possibly crucially the notification system will mirror the CTM system, whereby only CTM rights owners are notified of a latterly filed CTM application and not the owners of national rights.

The Registry has indicated that a two month period will be allowed, which could be extended, between the search report being issued to the applicant or its attorneys and the date at which the application is accepted and published and the date at which prior rights owners presumably will receive their notifications.

The applicant will have one opportunity to dissuade the Registry from sending a notification arguing that the notification is unjustified and will have the opportunity to amend the application away from any prior registration to avoid the proprietor being notified of the later filed application in the two month period.

Finally, the Registry has indicated that the new system will apply retrospectively to all pending applications, which have not been accepted, at the time the new system comes into force, even if the earlier applications have been filed under the old system.

If all the above changes come into force, probably the greatest consequence will be the owners of prior CTM and international trade mark applications and registrations will not automatically be informed of a conflicting application under the new notification system. Therefore, as the UK Trade Marks Registry will no longer be actively objecting to applications on the basis of prior rights, CTM and International rights holders and their representatives must be much more proactive in their portfolio management and watching strategies.

The UK Trade Marks Registry has indicated that such rights holders will be given the opportunity to 'opt in' to the notification system for a fee. However, it seems that it is crucial for all CTM and international rights holders to consider putting in place watch systems covering the UK, to guard against conflicting applications ‘creeping' through to registration.

As the new system of examination will be applied retrospectively to existing applications, it will also be wise if applicants can attempt to keep applications pending which have encountered prior rights objections under the old system until the new system comes into force by whatever means they can, in the hope that the prior rights owners will not actively oppose the application when it progresses under the new system.