Streamlining the application process - new Trade Mark Rules 2008

The process of registering a UK trade mark has been streamlined by the UK Intellectual Property Office (UK-IPO) with the introduction of the Trade Mark Rules 2008, which came into force on 1 October 2008.

The new regime is expected to speed up the application process of a UK trade mark application considerably by allowing straightforward unopposed applications to proceed to registration within only three to four months.By way of comparison, it usually takes four to six months to obtain a Community trade mark registration.The new rules have been designed to make the application process more consistent and flexible and to give the Registrar more discretion in granting extensions of time and in the filing of evidence.On the other hand, the new rules introduce shorter time periods for filing oppositions and counter-statements in inter partes proceedings and place a higher burden on trade mark owners to defend their marks and to react to conflicting UK trade mark applications. It is clear that these changes will make it even more important for trade mark owners to have effective trade mark watching services in place.

The new regime applies to all new UK trade mark applications that have been filed after 1 October 2008 and in matters where a "new step" was taken after this date.A summary of some of the most significant changes is set out below.

Opposition period shortened
Whilst overall the opposition procedure remains the same, there are some important changes.The most significant change for most trade mark owners is to the period following publication where a third party may oppose the registration of a trade mark.The "opposition period" has been shortened from three months to two months. If, at the end of this two month period, further time is required to decide whether or not to oppose an application, the potential opponent can apply for an extension to the opposition period of one further month.

The new rules are expected to speed up the registration process for most trade mark applications by one month.Given that over 90% of all applications are unopposed, the changes are good news for the majority of applicants.By way of comparison, the Community Trade Mark Office (OHIM) still employs a three month opposition period.However, the time frame for reacting to and potentially opposing a conflicting application has been considerably shortened forcing trade mark owners - and owners of unregistered common law rights - to react more quickly when deciding whether or not to oppose an application within the new two month opposition period, or whether to file for an extension of the opposition period.It will be particularly important for trade mark owners with larger portfolios, owners of unregistered rights and trade mark owners based overseas to ensure that they have an efficient watching service in place.

Changes to the cooling off period
Under the previous rules there was a cooling off period of 12 months after an opposition to registration was filed to allow parties to negotiate an amicable settlement.The UK-IPO has decided to make this term more flexible.Under the new rules the cooling off period has been divided into two parts, allowing nine months initially, with the option of extending the period by a further nine months to 18 months on request by both parties.Again, by way of comparison, the OHIM employs a system of an initial two month cooling off period, which can be extended up to a 24-month term.

Retroactive extensions of time
The new rules also provide trade mark owners and applicants with the right to request a retroactive extension of time to complete an action before the UK-IPO in such cases where a deadline has been missed and where a request is filed within two months of the missed deadline, provided there are no third parties involved and the matter does not involve an appeal to the Appointed Person.

Consequences of not filing a counterstatement
Under the previous rules, if an applicant failed to file a counterstatement in opposition proceedings in the period allowed, its trade mark application was automatically refused. This was perceived as too strict and the new rules allow the Registrar discretion to “direct otherwise” and consider whether to accept a possible late defence.Under the new rules an applicant may apply to have the relevant action set aside.This also applies to a trade mark proprietor who has failed to file a counter-statement in response to an action for revocation or invalidity.

Case management powers and evidence
The old rules provided specified fixed time periods for filing evidence for each type of office proceeding.This was again perceived to be inflexible and the new rules give the UK-IPO more formal case management powers.The Registrar now has the power to set a timetable for the parties and can specify deadlines for the submission of evidence taking account of the specific circumstances of each particular case.The Registrar also has the power to direct the issues on which evidence is required.This measure is aimed at reducing the amount of unnecessary evidence filed and is meant to focus the evidence on issues that are relevant to the case.The UK-IPO will issue further practice directions regarding its case management in due course.

Counterstatement and evidence in non-use revocations
Under the previous rules a registered trade mark owner could file evidence of use of his mark in two stages in non-use revocation proceedings.This procedure has often resulted in a debate as to whether the initial evidence filed was sufficient and as such matters have again been simplified under the new rules.The new rules now provide the proprietor with one opportunity to file their defensive evidence in order to support their registration.This means a reduction in the number of evidence rounds from four to three.

Power to set aside decisions
Under the new rules the Registrar has the power to set aside decisions where the applicant or proprietor can show that they were unaware that their application was opposed or there was an attempt to invalidate or revoke their existing trade mark registration.Applications to set aside a decision must be made promptly and within a six-month timeframe from the date of refusal or recordal of a cancellation.

Practical implications: how does this affect you?
Under the new rules obtaining a UK trade mark application should be speedier and more flexible making them a useful alternative to a Community trade mark application.Given that the UK-IPO has not increased its official application fees, the new system will certainly make UK trade mark applications more attractive and brand owners might consider supplementing their Community application with a most likely faster UK application in cases where a quick registration is sought.At the same time, trade mark owners have to be more vigilant and must ensure that they have an efficient watching procedure in place and act swiftly in deciding whether to oppose a conflicting application in the new two-month opposition period.

For further information on the implications of the new regime or if you are interested in setting up a trade mark watching service, please contact Felicity Hide or your usual advisor.We are happy to provide further information and details.

Boult Wade Tennant

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