Consultation paper on modernization of Trademark Rules issued

United Kingdom
The UK Intellectual Property Office (IPO) has issued a consultation paper entitled "Modernization and Consolidation of the Trademark Rules", inviting comments from all interested parties by no later than May 27 2008.  
The Trademark Rules 2000/136 set out procedural and operational requirements which apply to trademarks. The IPO has identified a need to consolidate and change some of the rules. The consultation paper consists of 13 questions reflecting changes or consolidation measures. The areas for review relate to:
  • opposition periods; 
  • changes to the cooling-off period; 
  • periods for filing counterstatements and whether counterstatements are necessary for a decision to be rendered in an opposition; 
  • filing evidence and case management; 
  • filing evidence in non-use cases; 
  • powers to set aside decisions; 
  • timing of procedure appeals; 
  • changes to the way in which information is published; 
  • changes to time periods regarding deficiencies in applications; and 
  • verification of priority claims.
The consultation paper also reflects on a long-felt need for EU harmonization in relation to the United Kingdom’s obligations under the Singapore Treaty on the Law of Trademarks, which sets minimum standards for the benefit of users of trademark registration systems. 
Additionally, the IPO considered changes to the current requirements for address of service so that an address for service in the United Kingdom, in another European Economic Association state or the Channel Islands is acceptable.      
With regard to opposition periods, the IPO considers that the success of cooling-off periods in minimizing prolonged litigation in opposition matters justifies changes to the opposition period itself. Moreover, any benefits resulting from the streamlining or fast tracking of new trademark applications is diluted considerably by the imposition of a mandatory three-month opposition period before the mark is registered. There are two possible options in this respect:
  • reducing the current three-month opposition period to two months; or 
  • splitting the opposition period so as to accelerate unopposed trademarks. 
With regard to the second option, there would be an initial period of six weeks for parties to consider whether they wish to oppose the application following publication. If a full opposition is not filed within the initial six-week period, but a third party is still considering the merits of filing an opposition, the applicant would be able to file a Form TM7A and the opposition period would be automatically extended for the full three-month period. The TM7A will be a simple, fee-free form.
The IPO also proposes to reduce the cooling-off period from 12 to nine months. The IPO is concerned that the current year-long period is not promoting the objective that parties settle matters early. The IPO also suggests that the new nine-month period be extendable for a total of 18 months, provided that:
  • both parties agree; and  
  • there is an earnest attempt to settle the opposition, supported by a statement of truth.                                     
In addition, the present system of permitting four rounds of evidence to be submitted in revocation proceedings for non-use has proved to be unproductive due to the low threshold of evidence that must be filed by the trademark owner in the first round. The IPO suggests that the trademark owner be given only one opportunity to submit evidence regarding use of its trademark. It is hoped that this proposition might curtail non-use proceedings to three (or even two) rounds. Proceedings would thus be more efficient and cost effective, as the trademark owner is best placed to know about use of its brand and should be able to collate such information readily - without the farce of submitting simply a statement claiming that the mark is in use.
Further issues which may be of interest are related to appeals and faster publication of new applications.
Chris McLeod and Emilie Scheffer, Hammonds, London

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