What is changing?

From 1 October 2007, the UK office will no longer refuse a UK Trade Mark Application, or International Registration designating the UK, on the basis of a perceived conflict with an earlier registered mark. Instead, the UK office will conduct a search of the applicable Registers, and will provide the Applicant with a list of those prior marks that the office thinks conflict with the application. This list of prior marks will not be a bar to registration – if the Applicant requests it, the mark will be accepted and published in the trade mark journal (assuming there are no other objections). When this happens, the UK office will notify the owners of those UK (and International Registrations designating the UK) that were identified by its search of the existence of the Application, so that they can oppose the application if they wish. This notification service will not be provided to the owners of prior Community Registrations, unless the owner of that registration has decided to ‘opt in’ to the notification service by paying a £50 official fee once every three years.

How does this affect you?

Trade Mark owners in the UK can no longer expect the UK Trade Marks Registry to refuse those applications which may cause confusion with the earlier trade mark – the onus is now solely on the Trade Mark owner to monitor the register to ensure that it is aware of, and can then oppose, those applications that are seen as problematic. The UK Registry’s planned notification service will provide a measure of assistance to Trade Mark owners in this respect, but only for owners of UK Registrations (and International Registrations that designate the UK), as well as those CTM owners who have ‘opted-in’ to the service.

How will we help you to monitor the trade mark register?

UK notification procedure

For UK Trade Mark Registrations which are on our records and for which we are the address for service at the UK Registry, we automatically receive notifications of the UK Office. We will also receive these notices for Community Registrations on our records that we have ‘opted-in’ on your behalf. Our practice will be to review these notices and, based on our knowledge of our clients businesses, report only those notices where we think action may be merited.

Additional Trade Mark watching service

In our view, the notification procedure of the UK Office will be of limited usefulness. This is because the system relies on the perception of a UK Trade Marks Examiner as to what applications are likely to be confused with a particular trade mark. This is not as comprehensive as a Trade Mark Watch service, where notifications are received in respect of all applications for similar marks in a particular class. Owners of CTM Registrations who ‘opt-in’ also need bear in mind that UK Office notifications will only be provided for trade mark applications filed in the UK, and not for applications filed in other EU member countries.

What should you do?

In the light of this important change, we recommend that you This e-mail address is being protected from spambots. You need JavaScript enabled to view it as soon as possible so that we can provide advice specific to your needs as regards which option (or options) will be best for you so as to ensure that your marks will be adequately protected following the change in practice in October.