Venner Shipley warns trade mark owners about changes to UK trade mark system
This article was taken from the Venner Shipley Newsletter edition 21
Important changes to the UK Trade Mark system mean that Trade Mark owners need to be doubly vigilant in monitoring and protecting their Trade Mark rights, warns Ed Harrison, a Trade Mark Partner at Venner Shipley.
In October 2007, it is proposed that the UK Trade Mark office will no longer object to new Trade Mark applications, even if it is felt that there is a possible conflict with an earlier mark. Historically, the UK office has always raised objections to new applications if there was a possible conflict, with the aim of preventing confusion between Trade Marks and thereby protecting the end consumer. This is all set to change later in the year.
According to Ed, the new system reflects a general shift towards what already happens with European Trade Marks (which automatically extend to the UK). “Owners of European Trade Marks are already used to this more liberal system,” he says, “and they take steps to ensure that their rights are not damaged by actively monitoring other conflicting Trade Mark applications. However, this represents a radical change in the UK.”
The changes at the UK office will also mean that there is likely to be an increase in cases where one company opposes the registration of another company’s Trade Mark. More opposition proceedings will mean that the Trade Mark registration process for some cases in the UK will become slower and more complicated as a result.
Ed Harrison advises that the best way for companies to be prepared for this is to ensure that every important Trade Mark is already registered, and that steps are taken to ensure that a watching service is put in place.
“A Trade Mark watching service looks through the Trade Mark journals, and notifies you of potentially conflicting Trade Marks,” he says. “Your Trade Mark attorney can then advise you on your options and you can consider whether you wish to take any further action”.
He further comments that “Not monitoring conflicting Trade Marks is no longer an option for any one who values their Trade Marks. It is like buying an expensive car, and then not wanting to spend the money on insurance!”