URGENT: UK CHANGES IN EXAMINATION PROCESS

From the beginning of October the United Kingdom Trade Marks Registry will no longer refuse to register a trade mark application on the basis of an earlier conflicting trade mark no matter how similar.  The responsibility for objection will now lie with the proprietor of the earlier right who will be able to oppose once advertisement takes place.

Previously with the examination procedures that were in place, it was possible for trade mark owners to have confidence that the examination procedures that were in place effectively meant that the Trade Marks Registry were “policing” the Register.  From 1 October trade mark owners will need to be far more proactive if they wish to avoid the potentially conflicting trade marks becoming registered.

The Trade Marks Registry will continue to search the relevant registers as part of the examination process and will correspond with proprietors of any earlier conflicting marks so that there is the opportunity to oppose.  In this respect the United Kingdom Registry will be adopting similar procedures to those already used by the European Community Trade Marks Office (OHIM).

You should be aware that the notification process will only operate in respect of United Kingdom trade marks.  It will not operate in respect of either International Registrations (Madrid Protocol) or European Community trade marks.  It is however possible to “opt in” and this can be achieved by the payment of an official fee.

It is now considered to be even more important for trade mark owners to ensure that their trade marks are being watched so that there is independent notification of potentially conflicting trade marks.  We would be happy to advise on this process and it is a service that we can operate on your behalf.

If you need further advice please do not hesitate to contact us.