Following a review of existing UK trade mark opposition proceedings, the UK IPO introduced a new ‘fast track’ opposition procedure on 1 October 2013. This procedure reduces the cost of opposing a third party’s trade mark application and the amount of time to obtain a decision.
When a trade mark application filed at the UK Intellectual Property Office (the “UK IPO”) has passed the examination procedure, it is published and third parties have two months in which to oppose the application based on their earlier rights. This period can be extended by one month.
The current opposition procedure can take a significant amount of time to complete, ranging from 9 to 18 months, partly due to the amount of evidence filed and the decision of the parties to attend a hearing. The cost, therefore, is far greater than the equivalent procedure before OHIM (the Community Trade Mark Office).
The newly introduced fast track procedure applies to oppositions which are straightforward, namely, those cases based on double identity (i.e. identical marks and identical goods or services) or confusingly similar marks (i.e. identical or similar marks and goods or services where there is also a likelihood of confusion between the marks). It does not extend to oppositions based on reputation or unregistered earlier rights such as passing off.
The main features of the fast track procedure are as follows:
- the opponent can only rely on up to three earlier registered trade marks;
- the opponent must file proof of use of the marks relied on if they are over five years old at the time the opposition is filed. Such evidence should not exceed 100 pages and be in the form of a witness statement;
- no further evidence can be adduced by the parties without the permission of the hearing officer;
- decisions will usually be made on the papers without a hearing;
- the opposition period will remain the same as the standard opposition procedure;
- the UK IPO expects to provide its decision within 6 months of the opposition being filed; and
- the decision can be appealed in the normal way to the Appointed Person or the High Court. However, a fee of £250 to file an appeal has been introduced to prevent frivolous appeals being filed.
Roy Crozier, a Partner in the intellectual property group at Clarke Willmott, commented: “The fast track will provide a faster, cheaper and less complicated way for businesses to protect their trade marks. Previously, the cost of a UK opposition had been quite high compared with the equivalent procedure before OHIM, partly due to the UK procedure involving the parties attending a hearing.”