UK trade mark applications – examination changes

Significant changes to the United Kingdom trade mark registration process will be introduced in October 2007. The UK Trade Marks Registry may currently refuse a UK trade mark application at the examination stage on the basis of an earlier conflicting trade mark. However, from October, an application will only be refused due to an earlier conflicting mark if the proprietor of the earlier mark successfully opposes the application.

The Registry will continue to search the UK, Community and International trade mark databases. However, under the new system, they will simply list any relevant marks in the examination report rather than raise an objection. An applicant then has two months in which to decide whether to contest the listing of any earlier mark, to amend the specification to try to remove any conflict, to withdraw the application, or to take no action.

Unless the applicant is able to persuade the Examiner that an earlier mark should not be listed, details of the pending application may be sent by the Registry to the proprietor of the earlier mark when the application is published. UK applications may be opposed within three months of the publication date and the purpose of notifying holders of earlier marks is to ensure that they have the opportunity to oppose a later conflicting application if they wish to so.

The Registry will automatically notify holders of earlier UK applications/registrations, or international registrations designating the UK. However, holders of earlier Community trade mark applications/registrations, or international registrations designating the European Community, will only be notified if they have “opted in” to the Registry scheme.

Owners of Community trade mark applications/registrations, or international registrations designating the European Community, should give serious consideration to “opting in” to the Registry’s notification system, particularly if they do not have a commercial trade mark watch in place.