By Tom Frederikse, Clintons
UK trade mark law has changed so that the UK Registry will no longer block applications for being identical or similar to existing registrations. From 1 October 2007 under the Trade Mark (Relative Grounds) Order 2007, existing trade mark holders will carry the burden of trying to oppose (or negotiate around) any application that may threaten their registrations, without assistance from the government beyond a single alert notifying them of a possible threat. This is good news for new applicants and bad news for existing owners of UK trade marks.
Until today, a new UK trade mark application had to overcome the twin hurdles of being both a registrable mark (i.e. distinctive, not descriptive or generic, not offensive or deceptive – known as “Absolute Grounds”) and being not identical or confusingly-similar to an existing mark in identical or similar classes of goods and services (known as “Relative Grounds”). The UK government, wishing to harmonise with the EU’s “Community Trade Mark” process (and, presumably, also to save costs), will now no longer refuse to register a mark on Relative Grounds unless a successful “opposition” is raised by the owner of an earlier mark.
Each new application will now be compared to the Register and notice of any likely overlap with an earlier registered trade mark will be sent to the relevant UK trade mark owners. Owners of a European-wide Community Trade Mark will not be notified at all unless they “opt-in for notification of conflicting later-filed marks” (for a cost of £50 for three years). This notification process carries no guarantee (and, in any case, always depends on good mail delivery) and all trade mark owners should therefore consider subscribing to one of the UK “watching services” to help ensure no threatening applications are missed.
Those applying for a new UK trade mark are now in a much better position as their application can only be blocked by an owner of some earlier right if that owner learns of the new application and takes action in time – not to mention the matter of obtaining proper advice and running a successful opposition case.
The recently-renamed Intellectual Property Office hopes the new system will create new room for “co-existence” between trade mark owners and will foster quicker commercial resolution of disputes. But, whilst it is likely that the main trade mark battles will continue to be fought over “who had earlier rights”, this new law raises the unsettling likelihood that (following some lost mail or oversight) the UK will soon see two registrations for the identical mark for identical goods and services.
The new law means that businesses looking to register their name or logo now face an easier process and those already holding a trade mark registration face the added worry of having to remain vigilant to any and all newcomers in their area of business.
The full text of the new law may be accessed via:http://www.opsi.gov.uk/si/si2007/draft/20077018.htm.
This article contains general information about English (or other) law. It does not contain legal advice. Clintonswww.clintons.co.uk