22 March 2013Trademarks

ITMA Spring Conference 2013: UK IPO outlines fast-track opposition plans

Allan James, head of trademarks at the UK Intellectual Property Office (IPO), has outlined plans for introducing a new fast-track opposition system at this year’s ITMA Spring Conference.

James, who was speaking only 30 minutes after the plans were published for public consultation, said the office is “firm” about the proposed system, which would co-exist with the current setup.

The system is aimed at small and medium-sized enterprises (SMEs) and would charge between £50 and £100 to file an opposition, reduced from £200. Oppositions would be resolved within three to four months, instead of more than a year.

The consultation closes on May 17, 2013 and the IPO plans to launch the fast-track system on October 1, 2013, said James.

In 2007, the office abolished ex officio proceedings, which require examiners to assess whether applied-for trademarks might conflict with earlier rights, allowing them to reject an application if there was a conflict.

The IPO subsequently introduced opposition procedures, in line with many other EU member states, but continued notifying registrants about potential new conflicts.

In 2012, the government asked the IPO to examine whether the opposition process was a burden for users of the systems, as SMEs had raised concerns that it was too costly.

Instead of returning to ex officio proceedings, James said the IPO now wants a fast track system to resolve oppositions brought on traditional grounds – which cover the same or similar goods and services to a registered mark.

Rights owners can still oppose on other grounds – including unregistered marks – by using the current procedure.

The office believes the reduced fees would be high enough to deter frivolous oppositions, and plans to limit complaints to cover two earlier marks. More controversially, said James, if the mark is more than five years old, the opponent would have to show proof of use within three months of the disputed mark being filed.

There would also be a £500 fee for appealing against the opposition, which will be refunded unless the appeal is dismissed.

ITMA president Catherine Wolfe said proof of use upfront “will be impossible” in some cases, while another audience member applauded the IPO’s attempts to speed up procedures, but said existing time constraints are “very challenging,” especially when dealing with foreign applicants.

In response to a question from the audience, James noted that the IPO hasn’t considered allowing one entity to use both the current and fast-track systems to oppose the same application.

“I think it’s unlikely that you can do both but if someone has a good reason for doing so then we will consider it. I can’t immediately see any benefit in allowing both,” he said, adding that fast track invalidation procedures “might be something else to consider”.

In the remainder of his update at the ITMA conference, James said both the number of trademark and design filings is increasing steadily at the IPO. “This is good news for business,” he said. “We are busy, as I’m sure you are too.”

James also explained that the office is scrapping its current IT systems and replacing them under a project entitled TM10.

Trademark search and e-filing services will be completely unavailable between March 28 and April 1, and delays to examination procedures are expected between April 2 and mid-July this year, when the project is expected to launch.

But once TM10 goes live, the office’s costs will fall, there will be improved trademark application forms, applicants can benefit from new e-tools to directly communicate with case workers and they can renew their trademarks online, said James. The IPO website will also be available 24/7.

The ITMA Spring Conference finishes today.

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