UK REGISTRY TO WARN TM OWNERS OF DANGERS OF CONFLICT

UK Registry to warn TM owners of dangers of conflict

The IPKat recently received a note from Guy Heath (Nabarro Nathanson) on the current state of play with regard to trade mark oppositions in the United Kingdom. In short, Guy says:

"Following consultation, the UK Trade Marks Registry announced this month that it will drop "relative grounds" examination. From around October 2007, the UK Registry proposes to ... use its prior rights search procedure merely to alert owners of earlier marks to potential conflicts.

This will bring UK practice into line with OHIM's approach. OHIM has never operated a relative grounds examination procedure, and around 25% of Community trade mark applications are opposed. With CTM applications outnumbering UK national trade mark applications by around 3:1, the UK Registry rightly feels that there is no longer a compelling rationale for its own intervention".

Guy asks what this shift in office procedure will mean in practice, observing:

"Some foresee that the UK Registry will lose further ground to OHIM, having lost its key distinguishing feature - the greater validity of the registrations that it issues. But the UK national procedure has other, enduring attractions: it is a quick and inexpensive way of getting rights in the core UK market, without the prospect of opposition from the numerous and vigilant trade mark owners in [the] European Union ...".

Predicting that UK opposition activity will increase considerably, Guy points out some of its salient features, with which foreign applicants may not be familiar. In particular,

* UK oppositions create an action estoppel. An unsuccessful opponent may be prevented from challenging validity later, even in a defence to infringement (this issue is currently being reviewed by the Court of Appeal in Special Effects v L'Oreal: see first instance decision here).

* Since 2004 Office rules require the content of the Statement of Grounds to be expressed in some detail. The attorney completing the form also has to sign a statement of truth. Would-be opponents should allow enough time for completion and verification of the pleading.

* Anyone opponent seeking to rely on registered rights over five years old must provide a Statement of Use for that mark. This is mandatory - not just (as at OHIM) something to be done at the applicant's request (though proof of the use will have to be given later).

* Where an opposition is based on registered rights, the registrar will usually give a preliminary indication of its likely success or failure. This is done once the pleadings are complete, but before dealing with the evidence. The outcome of the preliminary indication may either discourage an opportunistic opponent or force the parties to get real.

* There is a cooling-off period, but only if the opponent or applicant initiates it.

* UK procedure allows either party to request a hearing and cross-examination is an option.

* The registrar is increasingly prepared to award costs that reflects fees actually incurred. To avoid costs penalties, UK oppositions need to be run in a measured, economic fashion.

The IPKat thanks Guy for this and invites readers who practise in the UK to let him know if there are any further points we should ponder over, now that owners of earlier rights will have to engage more with the opposition process. Just email the IPKat here: he plans to publish any useful comments early next month.

No losers in Mars opposition (2003): click here to find out why
Opposition: the celestial science, here