Trademark changes: good for lawyers, bad for owners

On 1 October 2007 a new system for examining UK trademark applications was introduced.

The UK Intellectual Property Office (UK IPO) will no longer reject trademark applications on ‘relative grounds’.

Relative grounds include conflicts with prior existing UK and EU registered trademarks and applications.

The UK IPO will now simply notify the applicant of any similar UK or community trademarks (CTMs).

The applicant can then withdraw, modify, or proceed with the application.

If the applicant proceeds, the UK IPO will write to the owner of the conflicting trademark to notify it of the new application, following publication in the UK ‘Trade Marks Journal’.

It will then be open to the owner of that trademark to oppose the new application within the three-month opposition window.

The UK IPO will no longer of its own volition refuse registration on relative grounds.

However, in a move which can hardly be described as communautaire, only owners of UK trademarks will be automatically notified.

Owners of CTMs will have to opt in to receive this information and pay a fee of £50 per trademark.

This will place a much greater emphasis on vigilance by rights owners. They must watch out for notifications from the UK IPO, implement trademark-watching strategies and take action when a conflict arises.

If they do not, they risk registration of an identical or confusingly similar mark to their own.

Part of the justification for the change was to bring UK practice into line with that used for CTMs.

It shifts the burden away from the state and onto business.

Trademark attorneys and lawyers are likely to be the main beneficiaries, with trademark oppositions predicted to grow from around 3.5 per cent of filed applications to more than 30 per cent.

On a more general level, this is another example of the denationalisation of UK Government activity and the retreat of the state from activities that have traditionally been its responsibility.

The previous system sought to discourage the registration of the same or similar trademarks by unconnected undertakings and thus ensure a ‘clean register’.

Now the UK register faces becoming cluttered with conflicting and identical registrations.

A UK trademark registration could be devalued by this new initiative.

The change is also likely to have unforeseen consequences on other jurisdictions that incorporate UK law by statutory reference.

This last point appears to have been completely overlooked.

Overall, this must be seen as good for lawyers and the trademark profession, but probably as bad news for rights owners.

Michael Cover, partner, Charles Russell