There were a number of factors which required the UK Trade Marks Registry to streamline the procedures used to oppose registration applications. The first was a need, as a result of the Department of Trade & Industry’s Innovation Review, to speed up and make easier the enforcement of IP Rights (IPR) in the UK; the second was the need to reduce litigation costs; and the third was that users of the system asked for changes which would give an early indication of the likely outcome of any opposition proceedings.
Who will be involved?
In order to meet these needs, the Patent County Court will be given jurisdiction over trademark matters, and trademark attorneys will be given rights of audience. These measures will come into effect in spring 2005 and will mean that attorneys will be able to handle a wide range of business on behalf of their clients rather than instruct solicitors and counsel to act on their behalf. However, central to the objectives, and already now in place, is the revised opposition procedure.
What is the revised opposition procedure?
When opposing an application for registration a would-be opponent must now state, up front: what use they have made of any earlier protected right on which the opposition is based (if that earlier protected right has been registered for five years or more before publication of the opposed mark); and must, if challenged, provide proof of that use at the evidence stage.
This means that the opposition and any decision stemming from it will reflect the actual position in the marketplace because it will be assessed on actual use rather than on the old ‘notional and fair use’ test. Disputes are only likely to arise, therefore, when there is clearly a threat to the trademark as it is being used.
In addition, a single cooling-off period is provided. Where the parties agree to try and negotiate, there will be up to 12 months for them to do so. If however, the proceedings are joined then the Trade Marks Registry will give a preliminary indication of the likely outcome of any opposition based upon section 5(1) and (2) of the Trade Marks Act 1994, which accounts for 80% of all trademark oppositions. A Principal Hearing Officer will give a preliminary view without evidence needing to be filed.
If the preliminary view is undesirable to a party but they accept it, the matter need go no further. However, if that party does not accept the preliminary view, they have one month to notify the Trade Marks Registry that they wish to go to the evidential rounds.
The procedure also caters for partial success where both parties are given the option to proceed to the evidential rounds. The three-month period for each side to file evidence will then be set in the usual way. There is no appeal at this stage of the proceedings.
Attorneys will be able to handle a wide range of business on behalf of their clients rather than instruct solicitors and counsel to act on their behalf.
Have the changes been effective?
The aim of these changes is to speed up and reduce the costs to industry and commerce of trademark disputes.
Although it is too early yet to say what effect these changes have had, rough figures suggest that 25% of all preliminary indications are being accepted by the parties, bringing the disputes to an end at this point. How this figure will change over the coming months and years we will have to wait and see, but this new streamlined process is likely to result in a considerable saving of both time and money for trademark holders.
THE NEW PROCESS STEP BY STEP
- Opponent files against a trademark application with a statement of use (if applicable)
- A cooling off period of up to 12 months is available for parties to negotiate
- Applicant files a counterstatement and a request for the opponent to provide use (if applicable)
- The UK Trade Marks Registry issues a preliminary indication if grounds exist on 5(1) and 5(2) of the Trade Marks Act 1994
- If their findings are not accepted, the unsuccessful party can request to proceed to the evidence rounds
- The opponent submits evidence and proof of use (if applicable) (three months)
- The applicant provides evidence in support of its application (three months)
- The opponent submits evidence in reply (three months)
- Case reviewed
- Hearing (if requested)
- Decision issued
- If relevant, appeal filed
Keven Bader is head of the Law Section at the UK Trade Marks Registry
This article first appeared in IP Review, issue 9
