Community trade mark holders must monitor own marks from October

A modification to trade mark law will come into force in October which reduces the number of cases in which the Registry will oppose a trade mark application. It will no longer oppose marks which conflict with prior registrations. The holders of prior marks will have to object themselves.

The changes are contained in the Trade Marks (Relative Grounds) Order, which will come into force on 1st October having been signed into law by a minister earlier this month.

The changes mean that holders of international and Community Trade Marks (CTMs) will have to be more vigilant about trade mark applications in the UK.

"Probably the greatest consequence will be the owners of prior CTM trade mark applications and registrations will not automatically be informed of a conflicting application under the new notification system," said Lee Curtis, a trade mark specialist with Pinsent Masons, the law firm behind OUT-LAW.COM.

"Therefore, as the UK Trade Marks Registry will no longer be actively objecting to applications on the basis of prior rights, CTM rights holders and their representatives must be much more proactive in their portfolio management and watching strategies," he said.

The new Order modifies the Trade Marks Act.

"The registrar shall not refuse to register a trade mark on a ground mentioned in section 5 of the Trade Marks Act 1994 (relative grounds for refusal) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark or other earlier right," says the Order. "Section 37(2) of the Trade Marks Act 1994 (search of earlier trade marks) shall cease to have effect."

The Registry said in an earlier consultation document that the move brings the system into line with the commercial realities of the use of trade marks. It said that it would lead to a market based assessment by mark holders themselves about whether or not opposition is appropriate.

The Registry will monitor marks for Community Trade Mark holders, said Curtis, but for a fee.

"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, which we understand will total £50 and will cover notifications over a three year period. However, it seems that it is crucial for all CTM rights holders to consider putting in place watch systems covering the UK, to guard against conflicting applications ‘creeping' through to registration," he said.