UK Trade Mark Registration Practice

Trade Marks: Relative Grounds for Opposition

A change in the way trade mark applications will be examined by the Trade Marks Registry will take effect from 1 October 2007. The Registry will no longer automatically reject applications for which it considers there are relative grounds for refusal of registration under the Trade Marks Act 1994. (Relative grounds being where the mark for which an application is made clashes with an earlier mark). Instead, it will notify the applicant (who can decide whether it wants to take the risk and proceed with its application) and put the proprietor of any earlier trade mark on notice. It then becomes the responsibility of the proprietor of the earlier mark to raise an opposition to the registration on relative grounds, should it want to.

Trade Marks (Relative Grounds) Order 2007
(SI 2007/1976)

Context

The Trade Marks Act 1994 (the "Act") provides absolute grounds and relative grounds for refusing a trade mark registration. The relative grounds for refusal are if the mark is identical with or similar to an earlier registered trade mark (or an earlier unregistered right). The current procedure is that it is the Trade Marks Registry's duty to examine whether a trade mark satisfies the requirements of the Act, which for the assessment of relative grounds involves carrying out a search for similar and identical earlier registered trade marks. If relative grounds for refusal are found, the Registrar must inform the applicant that its current application has been rejected and give it the opportunity to either amend its application or make representations against the decision. However, if no grounds for refusal are found, the application will be published, after which there is a three month window in which anyone, including the proprietor of an earlier registered or unregistered right, may then object to the registration of the mark.

The Trade Marks (Relative Grounds) Order 2007 comes into effect on 1 October 2007 and will alter this procedure in important respects.

In essence, under the current regime, an application is automatically rejected if it conflicts with an earlier UK or Community (CTM) registered trade mark. It has become increasingly difficult to secure national UK trade marks, due in large part to the increase in successful CTM applications. It has also meant that applications for trade marks in the UK are being refused due to earlier CTM registrations for which the proprietor may in fact have no interest in the UK.

There is also an inconsistency within the current UK system whereby the Registrar can refuse registration on relative grounds due to the mere existence of an earlier trade mark whether or not it is actually in use. However, the proprietor of an earlier trade mark, which is more than 5 years old, can only object on relative grounds (at the opposition stage) to the extent that it can show that the mark has been used. So in some cases, the Registrar may automatically refuse registration of a mark due to the existence of an earlier trade mark, where its proprietor may not be able to oppose registration.

The CTM system differs in that it puts the onus on the proprietor of the earlier trade marks/rights to object on relative grounds. This means that there is a higher chance of applications proceeding to registration due to the proprietors of the earlier trade marks/rights not being proactive or choosing not to file an opposition. Given the comparative ease of securing a CTM registration, there has been concern that the UK system will become gridlocked with more and more people choosing the CTM route. This in turn makes it harder to secure a simple UK only registration due to a high chance that it will be automatically blocked on relative grounds thanks to a conflicting CTM.

The New Regime

The UK will now broadly follow the registration procedure used for CTMs. This means that on receiving an application for a UK trade mark, the Registry will still carry out searches for earlier trade marks (registered only). However, if it finds any, rather than automatically refusing the application, it will notify the applicant and allow it to decide whether to take the risk and proceed with its application, in the knowledge that the Registry will also put the proprietor of the earlier trade mark on notice that the application has been made.

It is important to note that only owners of earlier UK trade marks will be notified by the Registry automatically. Owners of CTMs will have to opt-in to the notification system (for renewable 3 year periods).

Comment

The new regime is a positive step by the Government to try to unify the trade mark registration system so that it is the same as that which operates in the EC. It may also encourage UK businesses to register their trade marks in the UK rather than opting for the more expensive (and sometimes unnecessary) EC CTM protection, given that there will now be a greater chance of a UK mark proceeding to registration. Overall, the new system should provide a better balance between the rights of earlier trade mark owners and those of new applicants.

Practical Tips for Businesses: There are two key points. First, if you have any registered CTMs, you should consider opting-in to the notification system. Second, you should be even more careful than before to deal properly with any communications received from the Registry, and you might consider subscribing to some form of commercial watching service.