Author: Luke Portnow
28 October, 2013
The United Kingdom Intellectual Property Office (UKIPO) has recently launched a new Fast Track opposition procedure. In a move aimed at making oppositions less time consuming and more cost-effective for SMEs, the fast track system should offer a cheaper, quicker, front-loaded procedure for some owners of earlier UK Trade Mark registrations where a conflict is perceived.
Aside from providing easier “access to justice”, the aim of this new procedure, as stated by the UKIPO, is “to benefit business by improving access to opposition proceedings at a cost proportionate to the complexity and value of the matter at stake”.
The new system can only be used by parties wishing to oppose registration of United Kingdom trade mark applications that are either identical or similar to their earlier trade marks, and which cover identical or similar goods and services (e.g. solely on the basis of double identity or likelihood of confusion).
Unlike the UKIPO’s standard opposition procedure, other bases of opposition such as “passing off” and reputation cannot be claimed under the Fast Track system, and a maximum of only three earlier marks can be relied upon.
The official fee for Fast Track oppositions has also been reduced by 50% compared to the standard procedure.
Aim and effect
Fast Track oppositions are geared towards disputes wherein there is no issue regarding the validity of earlier registration(s), with legal argument and paper-based comparison of the marks, rather than factual evidence, being important.
Fast Track oppositions should provide a quicker and lower-cost option for trade mark proprietors in a number of circumstances.
Interestingly, not only will the Fast Track assist SMEs in enforcing their trade mark registrations quicker and more cost-effectively, the new system may also be useful for larger entities, for whom receiving an opposition decision within six months may be very useful if they have many sub-brands evolving within fast-moving industry sectors.
For further information on the procedures involved, please contact your usual Boult Wade Tennant adviser or read the article: “In the inside lane” in the latest boult.bitesTM.