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New restrictions on opposing trade mark applications

Policies move closer to Community Trade Mark system

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The UK Trade Marks Registry will no longer object to applications because a third party has existing rights in a mark, it has said. The only person who can object on those grounds is the person who actually owns those rights.

The change follows consultation into the grounds for trade mark refusal in the Trade Marks Act of 1994 and will apply to all pending applications as well as to all future ones.

Until now the Registry has been able to object to trade mark applications if it found previous mark registrations or applications which seemed to conflict with the trade mark applied for by a person or company. Any other person could also object on those grounds.

In an effort to put its policies more closely in line with those of the Community Trade Mark system in Europe, though, the Registry has changed its approach.

"The Registrar of Trade Marks will no longer refuse to register a new trade mark application in the face of an earlier conflicting trade mark unless the owner of the earlier mark successfully opposes the new application," said the Registry. "The Registrar’s examiners would, nevertheless, still conduct a search as part of the examination process and would inform both the applicant for registration of the results of the search and also the owners of earlier conflicting trade marks identified in it if, and when, the application proceeds to publication."

The Registry said that the new approach is likely to be more commercially fair than existing ones. "The new registration regime means that the assessment of conflict with earlier marks becomes a more market place based assessment (with proprietors opposing if they consider there to be a conflict) rather than the mechanistic paper based assessment that currently takes place," said its consultation document. "This requires that the persons permitted to oppose or seek the invalidation of a registered mark be limited to those who are in the position to assess the real economic effect that the new trade mark may have on the earlier one. This is plainly a judgment for the proprietor of the earlier mark to make."

A more controversial justification for the changes is that it will make it harder for third party companies who are rivals to a trade mark applicant blocking the application for unrelated, tactical commercial purposes.

"To allow anyone to oppose or seek to invalidate a trade mark registration on the basis of a third party’s earlier trade mark or right would…permit the use of opposition and invalidation proceedings for tactical purposes, the result of which would be to expose the applicant to a greater risk of proceedings," said the document.

Trade mark specialist Lee Curtis of Pinsent Masons, the law firm behind OUT-LAW.COM, said that this was in fact not a common problem, and that preventing third party challenges could damage the trade mark system. "The Registry's comment on 'tactical oppositions' seems misguided, as such oppositions did not appear to be a particular problem under the old system," said Curtis.

"It would seem unfair that an application could proceed to grant which is technically invalid because a prior rights owner is not prepared to enforce their rights in opposition proceedings," he said. "If an application is invalid it should be challenged, regardless of whether the challenger is the prior rights owner or not."

The Trade Marks Registry said that it would still conduct its search of previous marks and inform any conflicting mark holders of the new application, but would not object on their behalf. Though the consultation is still open until March, the Registry has just published its second version of its plans and major changes are not expected.

Copyright © 2007, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

Related link

The consultation document (22 page / 428 KB PDF)

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