Important Changes in U.K. Trade Mark Examination Procedures which will Affect Rights of CTM Trade Mark Holders

Starting 1 October 2007, the U.K. Intellectual Property Office (UK-IPO) will be making significant changes in the procedures they use to examine trade mark applications. Currently, the UK-IPO, examines trade mark applications for prior conflicting marks on the U.K. Register, including European Community trade marks (CTM) as the proprietor’s right to a CTM registration automatically extends to the U.K. If an Examiner believes a prior mark poses an obstacle to a pending application they will provisionally refuse the application based on the prior mark, just as is done in South Africa.

Under the new examination procedures, while the UK-IPO will still examine an application for prior conflicting marks, they will not refuse an application based on a prior mark that may be confusingly similar. They will only cite the marks for the interest of the applicant so that the applicant can determine if they may wish to amend the specifications of goods or services or even abandon the application. Assuming the applicant wishes to proceed with the application, the UK-IPO will then give notice to the proprietors of U.K. trade mark registrations of the acceptance of the new application which may be conflicting with the prior mark and the onus will then be on the proprietor of the prior mark to lodge an opposition within three months of the date that the new application is published for opposition purposes.

However, the UK-IPO will not automatically give notice to the proprietor of a CTM registration if its mark has been cited as a possible conflicting mark to a new application. Such notice will be given only if the proprietor of a CTM registration chooses to "opt in" to the system by completing an appropriate form to be filed electronically with the UK-IPO requesting that it receive notification. The official fee for this notice is £50 per mark. Notice will then be received every time an Examiner cites the CTM mark as a potentially conflicting mark against a new U.K. trade mark application for a three year period from the date that the form is submitted. This new procedure, which requires an "opt in", starts on 01 October. While one can opt in at any time, if one wants to ensure that he will receive notice if his CTM mark is cited in the examination of the first batch of UK applications that are prosecuted in accordance with the new procedures, he must opt in before the 21st October 2007.

If you have any question regarding this new procedure, please contact

Kay Rickelman via e-mail at k.rickelman@spoor.com or

telephonically on +27 12 676 1213.

 

Date published: 2007/12/28
Author: Kay Rickelman

Tags: trade mark examination procedures ctm trade mark uk