Trade mark owners will need greater vigilance from October

Out-Law News | 08 Sep 2008 | 9:11 pm | 2 min. read

Trade mark owners will have to be more vigilant than ever in protecting their marks from the beginning of next month when new trade mark laws come into effect. The change is expected to increase demand for brand monitoring services.

From 1st October the process of registering a trade mark will be streamlined so that applications will only be automatically open to challenge, or opposition, for two months instead of three.

The changes are designed to make the process of trade mark application run more smoothly for the 90% of applications that are unopposed. That means that companies will have to work harder to catch marks that conflict with their own before the registration process is complete, said Lee Curtis, a trade mark specialist at Pinsent Masons, the law firm behind OUT-LAW.COM.

"The change is designed to speed up the registration process, as historically only around 10% of trade mark applications encounter oppositions," said Curtis. "However, the change will make it all the more important for trade mark owners to have trade mark watch services in place to monitor the advertisement of applications and give them an early warning of possible conflicting marks."

Though the automatic opposition period is reduced to two months it can easily be extended to three with the filing of a form to the UK Intellectual Property Office (UK-IPO). That process is free.

If someone opposes your trade mark application, the period in which you can file a defence, or counter-statement, will also be reduced from three months to two.

The deadline for filing defences when someone has applied to invalidate a trade mark will increase, though, from six weeks to two months. These changes were designed to harmonise the time limits on filing defences between the two processes, said Curtis.

As well as speeding up the process of registering a trade mark, the new rules will re-introduce a degree of flexibility into the process, allowing the UK-IPO some discretion in the case of missed deadlines.

"At present if a counter-statement is not filed in opposition proceedings, then the application is automatically deemed withdrawn," said Curtis. "The UK-IPO feels that this is draconian and the UK-IPO will now have 'discretion to direct otherwise' and accept the filing of a counter-statement late. In many ways this reverts to the practice in place around ten years ago."

The changes address previously identified problems in the system. The UK-IPO this year introduced a fast-track application process which reduced the waiting time for a trade mark to be examined from a month to 10 days for a £300 fee.

Users complained that such a reduction was ineffectual without a matching reduction in the period during which a trade mark can be opposed. It is that period which has been shortened by a month.

Curtis said that the changes introduce a flexibility into the process in some respects, but that users of the system will need to be keenly aware of the shortened time periods specified for other parts of the process.

"The guiding ethos of the new rules is to simplify and streamline UKIPO procedures," said Curtis. "However, although the new rules do introduce much more discretion on the part of the UK-IPO in filing evidence and granting extensions of time, the reduction in the time periods for filing oppositions and counter-statements, mean that it is all the more important that trade mark owners act quickly and decisively in challenging potentially conflicting trade mark applications."