New Trade Marks Registry Opposition Procedures

United Kingdom

The Trade Mark (Amendment) Rules 2004 will come into force on Wednesday 5 May 2004. The aim of the revised opposition procedures is to enable small and medium sized enterprises (SME's) more effectively, and at less cost, to obtain and protect their registered trade marks. The new rules bring in new streamlined opposition procedures, including:

1. a longer cooling off period (12 months) to allow parties to negotiate a settlement;

2. the introduction of the Registry's preliminary indication on cases where an opponent has raised grounds under s5(1) (identical marks for identical goods/services) or 5(2) (identical marks applied to similar goods/services or similar marks applied to identical or similar goods/services) of the Trade Marks Act 1994 (the Act);

3. the requirement for opponents to prove use of an earlier trade mark relied upon if it is over 5 years old;

4. in invalidity proceedings, the requirement for an applicant to prove use (or proper reasons for non-use) in the 5 years prior to the date of application for invalidity;

5. allowing the Appointed Person to decide appeals from the papers where the parties do not want an oral hearing; and

6. the requirement for an applicant in revocation (non-use) cases to specify the 5 year period from which revocation is sought.

Opposition Procedure

After a trade mark has been published anyone can oppose the application within 3 months of the publication. At the moment the fee is £200, but this is likely to increase to £300. The parties can then agree a cooling-off period which enables them to negotiate a settlement. Currently, this is 3 months extendable, by agreement of both parties, to 6 months. Under the new rules this will change to 12 months.

Preliminary View

Under the new rules the Registry will give a preliminary view on the grounds of opposition raised under s 5(1) and 5(2) of the Act. The preliminary view will not take account of any evidence the parties may have available, which may be filed after the preliminary view. The preliminary view will be a prima facie comparison of the respective trade marks and their goods and services but having regard to ECJ case law. Therefore, the preliminary view should give a good indication of the likely outcome of the dispute. If any party wishes to file evidence after the preliminary view they may do so in writing or orally within one month after the preliminary view and the case will proceed to a full hearing as usual.

If the parties decide not to proceed to the evidence phase then the application/opposition (depending on the preliminary view) will be deemed withdrawn. Further, if the preliminary view suggests that an application is registrable but only in part, the applicant will be given one month to amend the application, otherwise the application will be deemed withdrawn in its entirety.

If an opponent is opposing an application on the basis of a trade mark that is 5 years old or more, the opponent is required to make a statement of use which sets out the goods and services on which the trade mark has been used (or good reasons for non-use). This will ensure that an opposition is not speculative. The applicant may either accept the statement of use or require the opponent to provide the proof in the evidence phase after the preliminary view.

Comment

The new procedure should make oppositions of trade mark applications cheaper and easier due to the new preliminary view given by the Registry. By introducing the preliminary view parties will have a better idea as to whether it is worth pursuing the opposition or defending it.

For further information, please contact Stephen Whybrow by telephone on +44 (0) 20 7367 2175 or by email at [email protected] , or Lucy Kilshaw by telephone on +44 (0) 20 7367 2044 or by email at [email protected] or Lydia Watts by telephone on +44 (0) 20 7367 2054 or by e-mail at [email protected]