Trade Mark Owners - Beware!

In my post yesterday ("Managing IP Assets in a Digital World"), I mentioned some important changes in how trade marks are registered by the UK Intellectual Property Office (UKIPO).

If you own a registered trade mark, the UKIPO will no longer act as your policeman in automatically preventing similar trade marks from being registered. So what should you do? If you value your brand and it's protected by a registered trade mark, you should use a 'watching service' - offered by Trade Mark Agents etc. - to give you early warning of any applications to register a trade mark which could overlap with yours.

My colleague Yasmin Joomraty looks into this in more detail.

The detail

If you own a UK trade mark, the UKIPO will notify you of the proposed application and leave it to you to object. If you own a Community Trade Mark or an international trade mark, you must opt-in as described below in order to receive such notification.

Similarly, if you are applying to register a trade mark, you must be aware that the UKIPO will notify the owners of any similar registered trade marks, who may oppose your application. If they are successful in opposing, your trade mark will not be registered and you may be liable for their costs. If you would like to know more, please read the detailed summary below.

Changes in the UK Trade Mark Registration Procedure

Significant changes have been made to the way in which the UKIPO examines applications for trade mark applications. These may affect you in two ways:

1. Applying to register a new trade mark; and
2. Protecting your existing trade mark (i.e. when a third party applies to register a trade mark similar to your registered trade mark)

Procedure Prior to 1 October 2007

Previously, when you submitted an application to register a new trade mark, the UKIPO searched UK, EU and international records for similar registered trade marks. In the event it found a conflicting trade mark, the UKIPO could refuse the application on relative grounds. In other words, it was at the UKIPO's discretion whether to oppose an application on the ground that it conflicted with an earlier trade mark registered in the UK or under one of the international treaties.

Procedure post 1 October 2007

1) Applying to register a new trade mark

Now, when you submit an application to register a new trade mark, the UKIPO will search the UK register and advise you of the results of the search. You will then have the choice to continue with the application process or not, bearing in mind the following:

• Although the UKIPO will not refuse the application outright, it will notify the owners of the similar registered trade marks.
• The owners of the marks will then choose whether or not to oppose your application. If they choose to oppose and are successful in doing so, you could be liable for their costs as well as being refused registration. 
• Only owners of Community Trade Marks/international trade marks who have opted-in as detailed below will receive notification of your application (if the trade mark is similar).

2) Protecting your existing trade marks

The UKIPO will not automatically notify the owners of Community Trade Marks or international trade marks (although it will notify owners of UK trade marks). In order to receive such notification, owners of non-UK trade marks must opt-in. It is preferable to opt-in before 20 October in order to receive notification of all relevant applications since 1 October. You can complete the opt-in form online to benefit from this service, which is charged at £50 for 3 years. 

Further information on the above can be found on the UKIPO website and in the fact sheets on applying to register a new trade mark and on opposing the registration of a third party's trade mark.

Yasmin Joomraty

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