Owners must police their trademarks

Rivals give creative companies reason enough to keep vigilant, but a major legal change now means staying sharp is the only way to ensure their trademarks are not infringed.

From yesterday, the UK Intellectual Property Office will no longer automatically refuse applications where there is an earlier similar trademark that might conflict.

Instead, it is now for the holder of the earlier mark to successfully block and oppose the new application “if they so wish,” the government confirmed yesterday.

In effect, the UK IPO will examine and grant trademarks on so-called absolute grounds only – namely, whether they are distinctive and suitable for registration.

Under the law, trademark examiners will alert the new applicant if they consider their registration may potentially conflict with a trademark already on the register.

The applicant must then choose between continuing with the application, restricting the list of goods and services to try to overcome the clash with the earlier mark, or withdraw it.

The UK IPO will alert owners of earlier conflicting marks, identified from the register, if the new applicant decides to proceed with registration.

However, individuals holding marks under European rights will have to “opt in” by completing a form and paying a fee if they wish to be notified by the IPO.

If the new applicant gets their mark published in the Trade Marks Journal, the owners of any earlier marks or rights can oppose the application.

The opposition can be made on the grounds they think that the use of the new mark will infringe their earlier mark or right.

In a statement, the IPO said: “If there is a successful opposition, the applicant could be liable for costs and may not be able to get their mark registered."

Lord Triesman, minister for intellectual property and quality, welcomed the amendments to Section 5 of the Trade Marks Act 1994, which took effect from October 1, 2007.

He said: “The new system will make it easier for businesses wanting to launch new products and protect them with UK trade marks. It will also help users by aligning the UK regime with the European one.”

Ian Fletcher, chief executive of the UK Intellectual Property Office added: “This is a major change which affects every trade mark holder and applicant.

“We are confident that having now introduced the amendments we will maintain our high standard of service to all our users.”

For Roger Sinclair, a legal consultant specialising in contract and commercial law, the change in the law is “simply ‘interesting’, as opposed to intrinsically good or bad.”

Speaking to FreelanceUK, he added: “Bureaucratic obstruction of Trade Mark applications by the UK IPO may well be reduced.

“But litigation started by holders of existing marks who object may well increase, since they will now be expressly told of the new potentially conflicting application.

“[They will also] have to start opposition proceedings if they wish to object; holders of existing marks will no longer be able to rely on the Trade Marks office itself to maintain their objection.”


2nd October 2007

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