17 December 2013

New rules mean trade mark owners can oppose new trade mark applications more efficiently

Since October 2013 businesses that have registered trade marks have been able, in certain circumstances, to block applications by others to register identical or similar trade marks more quickly and easily under the new Fast Track Oppositions Rules.

The new rules apply in the same circumstances as the old rules (which remain in force) i.e. where the opposition to the proposed new mark is because it is one of the following:

  • identical to the existing mark, and registered in relation to identical goods and/or services;
  • identical and registered in relation to similar goods and/or services and there is a likelihood of confusion between the 2 marks;
  • similar and registered in relation to similar goods and/or services and there is a likelihood of confusion between the 2 marks.

Under the Fast Track, the owner of the existing trade mark cannot rely on more than three existing registrations and, if any existing mark is more than five years old, proof of use must be provided. Otherwise there is no more evidence required.

There is no requirement for an oral hearing and the opposition can be decided on the documents submitted. The parties can apply for an oral hearing and, the hearing will usually be by telephone. On appeal, there is a fee of £250, which is recoverable if the application is successful.

Recommendation

Trade mark owners not already doing so should monitor the trade marks registry for applications to register marks that are identical or similar to their own marks, and in similar or identical classes. They can then make an early decision whether to take action under the new, faster opposition procedure.

For more information please contact Rob Lucas at Shulmans on 0113 297 8941 or at rlucas@shulmans.co.uk.