UK Trade Mark Registry Relative Grounds For Refusal and The Way Forward
This article was taken from the Venner Shipley Newsletter edition 20
The UK Trade Mark Registry recently issued a consultation paper with a view to deciding whether or not earlier Trade Marks should continue to be raised as formal objections (otherwise known as ‘relative grounds for refusal’) against new Trade Mark applications. The Registry has analysed the responses and the conclusion has now been published.
Upon careful consideration, the Registry has decided to adopt the most popular choice. Therefore once an application has been filed, the Registry will complete a search for earlier Trade Marks but formal objections will no longer be raised. Instead, a copy of the search will be sent to the applicant, as well as each of the owners of the earlier Trade Marks shown in the search. This new procedure is likely to be much the same as is currently followed by the Community Trade Mark Office.
It is hoped that notifying the owners of the earlier rights will ensure that potential disputes are settled at the earliest possible stage thereby avoiding wasted investment in new marks.
One of the outcomes of this change is that it will become even more important to make searches prior to adopting and registering a new Trade Mark, and to be vigilant in monitoring potentially conflicting applications by using our Trade Mark watching service.
It is also possible that the change to the examination procedure will mean that the defence to infringement currently given under Section 11 (1) of the Trade Marks Act will no longer be available. Section 11 (1) currently states ‘a registered Trade Mark is not infringed by the use of another registered Trade Mark in relation to the goods or services for which the latter is registered.’ If this defence is not removed entirely, then obviously its effectiveness will be greatly reduced, as the automatic presumption of validity currently given to registered Trade Marks will likewise be reduced.
The Registry will now work on the relevant administrative and legislative changes that are required for this new procedure. This will also involve a number of internal Registry changes and it is expected that the new examination process will be active from October 2007.
We will provide a further update once we know the precise amendments that will be made to the UK Trade Marks Act, but if you have any questions on the proposed changes in the meantime then please contact us.