28 technology
Tech trademarks move into the fast lane?
The October 1 change to UK trademark opposition procedure aims to encourage SMEs to defend their rights by blocking new applications for confusingly similar trademarks, writes Simon Stanes, trademark attorney, Pitmans LLP
The new “fast-track” opposition introduced by the UK Intellectual Property Office (UK IPO) is designed to reduce cost, complexity and duration of opposition proceedings. It also removes the perceived risk of larger defendants prolonging proceedings and driving up both parties’ legal costs.
This article explains the changing background to trademark proceedings behind the fast-track procedures and discusses the potential impact of the new measures.
Need for change?
Since the UKIPO ceased blocking new conflicting applications during the examination process, opposition rates have stayed comparatively low at 4-5% (the corresponding figure at the European Union trademark office (OHIM) consistently runs at around 15%).
Although the UK IPO still notifies trademark owners of conflicting applications, the perceived cost and administrative burden of challenging discourages SMEs from enforcing their rights.
The fast-track system
The new system seeks to remove all evidence procedures from oppositions based on:
• identical marks and identical goods/ services,
• identical marks and similar goods/ services and
• similar marks and identical or similar goods/services.
These simplest cases turn on a notional comparison between the opponent’s and the applicant's trademarks in relation to the products listed in their specifications.
The fast-track runs in parallel with the existing opposition process. A fast-track opponent is limited to opposing with three registrations, of which any over five years old must be supported with evidence of use, at the time of filing the opposition.
www.businessmag.co.uk
The defendant may file evidence in support of their application only in exceptional circumstances. The UK IPO anticipates that in most cases a fast-track opposition will proceed to a decision on the basis of written submissions only without an oral hearing.
Pitmans comment
The removal of the UK IPO's power to block trademark applications based on prior rights did much to free up the application process and avoid lengthy fights with the UK IPO over prior rights, where the owner themself had no interest in opposition. The current low rate of opposition is also a boon to SMEs seeking registration.
The potential downside of low opposition rates is a build up of conflicting registered rights, leading to consumer confusion and later cancellation action. This could ultimately bring uncertainty and dwindling confidence in the strength of a UK trademark registration.
Due to the requirement to accompany filing with evidence of use, the fast-track is only optimised for newer registrations within their initial five year grace-period. Potential fast-track opponents also need to assess the degree of similarity between the trademarks, their commercial fields and the availability of evidence of enhanced reputation.
The UK IPO's discretion to allow evidence will likely form a flash-point for conflict between fast-track opponents and defendants seeking to bolster their defence.
Ultimately the traditional evidence- based opposition remains available for trademarks with a degree of reputation or where sufficient evidence of use cannot be supplied at the outset. With scale- limited costs awards and increasingly strict time limits, this route still remains suitable for SMEs.
It will be interesting to see whether the fast-track scheme leads to an increase in the opposition rate in the UK.
THE BUSINESS MAGAZINE – THAMES VALLEY – NOVEMBER 2013 Key points for tech companies
• Class 9 is key for tech companies to registering brands. This covers a huge range of electronic goods with potentially large demand for similar marks. The fast-track procedure will be particularly relevant in this class.
• If you receive notification from the UK IPO of a similar competitor trademark and wish to oppose, you only have two months to proceed.
• It is extremely important to carry out pre-filing trademark searches prior to adopting a new brand. This simple step can provide early warning of potential problems and avoid the cost and disruption of legal action and rebranding post launch.
• Keep records of your use of your key brands, including brochures, advertisements and invoices, as well as commercial data, such as sales figures. Once a trademark registration is over five years old, you will need to provide this evidence if you want to take enforcement action.
Details: Simon Stanes 020-7634-4628
sstanes@pitmans.com www.pitmans.com/technology/
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