29 September 2013

New Alternative ‘Fast Track’ UK TM Opposition

With effect from 1 October 2013 a new “fast-track” opposition procedure will be available to anyone wishing to oppose advertised UK trade mark applications on the basis that the mark applied for is either identical, or confusingly similar, to its own earlier registered mark(s). The opponent will now have the choice of filing either a standard opposition or a “fast-track” opposition. As the new alternative “fast-track” system’s name suggests, the Registry will issue its decision on “fast-track” oppositions much faster than on oppositions filed on the standard basis. The Registry anticipates that decisions on oppositions filed in the “fast- track” system will be issued within six months of filing (as opposed to one year for oppositions filed on the standard basis).

The greater speed is directly related to the fact that this new “fast-track” opposition procedure doesn’t incorporate the usual steps for exchanging evidence relating to actual or likely confusion between the respective marks. In addition, other than in exceptional cases, the Registry will make its decision without the need for the parties to ever attend an oral hearing.

The only evidence which the fast track procedure envisages being filed is evidence of use of any registered mark on which the opponent bases its opposition which was five or more years old at the date on which the opposed application was advertised.   It will, in fact, be obligatory for the opponent to file such evidence of use in order to qualify for the “fast-track” procedure.  In a standard opposition, by contrast, such evidence only needs to be filed if the applicant formally requests it.  Furthermore, under the fast-track procedure, the evidence of use must be filed with the notice of opposition itself by the deadline for filing the opposition.  This is by far the most unattractive requirement of the new “fast-track” procedure since it presupposes that a trade mark owner will have such evidence of use ready to hand.  In practice, the decision to file an opposition is made at the eleventh hour when an approach to the applicant fails to result in the withdrawal or trimming of the application so complying with a requirement to file evidence of use with the opposition itself risks creating  further consternation.

Where the opponent’s earlier marks have not been protected by trade mark registrations (or where the registration procedure for them has not yet completed) the opponent cannot avail of the “fast-track” procedure.  Similarly, if the trade mark owner wishes to rely on the fact that its registered marks have acquired a reputation it must opt instead for the standard opposition procedure.

In addition a trade mark owner opposing under the “fast-track” procedure cannot rely on more than three of its trade mark registrations as a basis of opposition.   If a trade mark owner wishes to rely on more than three registrations it must opt for the standard opposition procedure.

The Trade Mark Registry’s explanation for introducing the new “fast-track” procedure is a desire to reduce “red-tape” and to make the opposition process more straightforward and less time consuming for the public.   It is however difficult to see how introducing a requirement for every opponent to file evidence of use of 5+year  old registered marks at such an early stage in the proceedings will make the opposition procedure easier for anyone.   Where an opponent relies on registrations that are 5+ years old, the new “fast-track” system automatically puts the opponent to the trouble and expense of locating, collating and filing evidence of use at the very outset, before the opposition itself can be filed.  In a standard opposition, the opposition has often been settled to the parties’ mutual satisfaction before the applicant needs to go to the trouble and expense of locating any such evidence of use.

The requirement to prepare and file evidence of use with the notice of opposition itself in order to avail of the “fast-track” opposition procedure now makes it more important than ever for trade mark owners to get as much advance notice as possible of third party applications to register identical or confusingly similar marks.   A trade mark watching service is invaluable in this regard. Please let us know if you would like us to set up early watching services for any of your marks.