On October, 1 2013 a new fast track opposition procedure will be available in the UK to owners of UK or EU registered trademarks where they think their marks will be affected by double identity or likelihood of confusion with a new mark.
The owner of an existing mark may bring a fast track opposition if:
- it is based on double identity or likelihood of confusion with the new mark;
- it is based on no more than three earlier EU or UK trade marks;
- proof of use of the earlier trade marks is provided; and
- it considers that the opposition can be determined without the need for further evidence or an oral hearing.
The price to file a fast track opposition is £100 and the price to file an appeal against a fast track opposition is £250.
In the past, the responsibility to decide if a new mark conflicted with an existing mark fell to the examiners at the UK Intellectual Property Office (the IPO). However, after 2007, a new mark could only be refused if the owner of an existing mark successfully opposed an application. Thus the burden to prove a conflict with an existing mark passed from the IPO to rights owners.
The new fast track procedure is designed to make it easier and cheaper for businesses, especially small to medium sized businesses, to protect and defend their trade marks.
The new procedure will be inserted into the Trade Marks Rules 2008 by The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013.
For oppositions that are based on different criteria to those set out above, the current opposition procedure is available in which evidence can be adduced and the matter decided following an oral hearing.
Source: Intellectual Property Office (United Kingdom)
This article was prepared by Ralph Wilkinson (ralph.wilkinson@nortonrosefulbright.com / +44 20 7444 3151) of Norton Rose Fulbright’s London Intellectual property group.