The UK Intellectual Property Office (IPO) has responded to concerns over the time and cost of UK trade mark opposition proceedings with the introduction of a new fast track opposition procedure. The fast track comes into force today, 1 October 2013.
Background to the changes
Since 2007, a UK trade mark can only be refused registration on the grounds of a conflict with an existing mark if the prior rights-holder successfully brings opposition proceedings against the application. This shift of responsibility from the registry (which had previously been entitled to itself refuse an application at the examination stage if it was aware of a conflict with a prior mark) to the owner of prior rights has inevitably resulted in a significant increase in the number of oppositions coming before the IPO.
In March 2013, the IPO launched a consultation on its proposals for a new "fast-track" opposition procedure, which aimed to meet concerns about the current process by providing a faster, more streamlined method for businesses to resolve less complex trade mark oppositions. Respondents to the consultation included professional representative bodies, patent attorneys, IP professionals, SMEs and inventors.
The output of the consultation are the Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 ("Rules"), which introduce a new fast-track opposition procedure which launches today. The IPO has also published Practice Note 2/2013 on the Rules, which develops some of the detail of the new procedure.
Key features of the process
Key points to note regarding the fast track opposition process are as follows:
Oppositions filed using the new procedure should use a new Form TM7F.
The process will only be available for oppositions based on s5(1) or 5(2) Trade Marks Act 1994 (i.e. earlier identical/ similar mark(s) protected for identical/ similar goods/services). The number of earlier marks which can be relied upon will be limited to three.
Where a fast-track opposition is based on a trade mark registration that was more than 5 years old at the date of publication of the application under opposition, proof of use of the earlier registered mark must be filed with the Opposition, using a pro forma statement.
A limit has been placed on the volume of evidence that can be filed. Exhibits to the TM7F should be presented in a clear and structured manner and should not exceed 100 pages. Although either party may make a request to file further evidence beyond the Proof of Use, this will be allowed only in exceptional circumstances, within the Hearing Officer's discretion.
Decisions will generally be made based on the written submissions. However, provision may be made for an oral hearing where it is initiated by a Hearing Officer, or where it is requested by either party and deemed appropriate by the Hearing Officer to deal with the case justly and at proportionate cost. Where an oral hearing is agreed, it will usually be conducted by teleconference, rather than in person.
The official fee for a fast-track opposition will be £100. In order that the fee does not become a factor in the decision whether to file a fast track or conventional opposition, the official fee for a conventional opposition will also be reduced to £100 where the grounds of opposition are limited to section 5(1) and/or 5(2).
An appeal fee of £250 will be introduced for both the fast track and conventional opposition processes. This fee will not be refundable, but will be recoverable by the winning party.
Impact of the changes
The respondents to the IPO consultation generally agreed that, at present, businesses may be deterred from filing an opposition against a UK trade mark application by the perceived cost and lengthiness of proceedings. The new procedure will hopefully go some way towards addressing these concerns, both due to the reduced fee and the fact that decisions should be made in a shorter period (6 months or less, and ideally 3/4 months), compared to the usual 9-18 months using the standard opposition procedure.
The need to file proof of use at the outset, and the limit on the volume of evidence, may be viewed as disadvantages in some instances. However, they will hopefully encourage potential opponents to properly analyse their case at their outset, and to present it in a succinct and clear manner - which in itself is likely to result in a longer-term time and cost saving.