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News in brief
1. The changed UK Trade Mark Registry Examination
Practice - note for owners of European Union (CTM) and
International Trade Marks that designate the EU as a whole (not
merely the UK)
As many brand owners are now aware, the UK
Intellectual Property Office (IPO) changed its examination practice
from 1 October 2007 in relation to new trade mark
applications. UK Intellectual Property Office has issued a
detailed practice amendment notice (PAN 8/07)
www.ipo.gov.uk.
The essence of the change, bringing the UK
practice into line with that in the EU, is that the UK Trade Mark
Registry (Registry) will not automatically refuse to register a new
mark on the basis of conflicts with prior-registered trade marks
protected in the UK. Instead, where it identifies a conflict,
the Registry will now notify both the applicant and the proprietor
of the earlier registration(s) in question. However, there
are exceptions to this notification procedure and this raises a
practice point for proprietors that can, in certain circumstances,
be important.
Do you need to “opt-in”?
Owners of UK registered trade marks and those
holding international registrations designating the UK will
automatically be notified. However, the important exception is that
the owners of Community trade marks (CTM) and International Trade
Marks designating the EC as a whole (rather than merely the UK)
will not be automatically notified unless the owners of such marks
opt in to the notification system (opt-in). This can be done
by filing the necessary form and paying a fee (£50 per mark), in
which case the opt-in will last for a period of three years from
the date of filing the notification request.
Overwhelmingly, proprietors of CTMs and
International Trade Marks designating the EC as a whole (rather
than merely the UK) are likely to consider it prudent to opt in
because in practice it is likely to be much easier, cheaper and
quicker to prevent a conflicting application from being registered
than it is to challenge a mark later on, especially where
significant use has been made of it.
On the other hand, opt-in may not be
necessary, if, for example:
- You have an identical UK registration that is
likely to remain in force for a number of years (if so, then any
conflicting applications will be notified to you automatically by
the UK IPO) or
- You are already paying for a suitable
watching service in respect of the same marks
Is there anything else you should do?
- Generally, the new system means that paying
for suitable watching services is likely to be more important for
proprietors of registered marks and many owners will consider it
prudent to review their marks and services accordingly
- Under the new system, proprietors will need
to be reasonably willing to file oppositions in respect of
conflicting applications and ready in practice to do so
Further practical points
- A register will be accessible on the IPO
website identifying marks where the relevant proprietors have opted
in
- Any trade mark owner may opt out of the new
notification system at any time by notifying the UK IPO office in
writing
- Proprietors should ensure their email address
for the UK IPO notification system is current and in regular
use
If you would like any further advice or
assistance in relation to this matter, please contact us.
2. Our way or the highway? An update on patent
prosecution…
In July and September 2007, the UK
Intellectual Property Office started a pilot Patent Prosecution
Highway with the Japan Patent Office and the United States Patent
and Trademark Office respectively.
This change has been brought about following
the Gowers Review of Intellectual Property. If successful it
could offer a significant way of reducing the burden on applicants
for patents since it enables and applicant that has received an
examination report from either the UK Intellectual Property Office
(UK-IPO) or the United States Patent and Trademark Office (USPTO)
to request accelerated examination of a corresponding patent
application filed in the other country, potentially reducing to
some degree the time taken and costs incurred in securing patent
protection across these jurisdictions.
To read more about this initiative, designed
to provide a means of accelerating the examination of patent
applications where examination work has already been conducted in
another intellectual property office, please refer to the UK IPO
website at: www.ipo.gov.uk.
If you would like any further advice or
assistance in relation to this matter, please contact Duncan
Hinnells or Richard Roberts.