Fast-track trademark examination system to be introduced

From April 6 2008 (in practice, from Monday April 7 2008) trademark applicants will be offered the possibility to 'fast track' online trademark applications thanks to a new examination system set up by the UK Intellectual Property Office (IPO), as suggested in the Gowers Review of Intellectual Property issued in December 2006. The aim is to ensure that the registration of a trademark - excluding any oppositions or objections - can be achieved within four months of the application date.

Following the recommendations of the Gowers Review, in September 2007 the IPO addressed a consultation on the fast-track processing of trademark examination to a selection of IP practitioners, professional representative bodies and government bodies. Responses to the consultation were invited by December 14 2007 and the IPO's response document followed on January 14 2008. The IPO's intention to introduce the fast-track system on April 6 2008 was supported by the government, which drafted the Trademarks and Trademarks (Fees) (Amendment) Rules 2008 on January 8 2008. The rules, which will enter into force on April 6 2008, amend:

• Rule 5 of the Trademarks Rules 2000 by inserting new Paragraphs 1A to 1D;
  
  
• Rule 11 by inserting a new Paragraph 11B; and
  
  
• Rule 3 of the Trademarks (Fees) Rules 2000 by inserting a new Paragraph 3A.

Under the new system, an applicant may apply for a new, single trademark electronically by paying an additional fee of £300 online at the same time as the application and requesting a fast-track examination procedure. More specifically, the criteria for fast-track examination are as follows:

• New trademark - the system is available for new trademark applications from April 6 2008.
  
  
• Single trademark - the system is not available for series of marks because of the nature of these marks, which require additional examination of the series aspect of the application, as well as examination of each mark of the series independently (under Article 41(2) of Trademarks Act 1994, a 'series of trademarks' means "a number of trademarks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trademark").
  
  
• Electronic filing - the application for fast-track examination can be filed only electronically through Form TM3 (which will be amended and available online on April 7 2008).
  
  
• Online payment - the method of payment is electronic payment only, by debit/credit card or via a deposit account.
  
  
• Additional fee - applicants must pay an additional fee of £300, in addition to the £200 application fee covering one class and, if applicable, a fee of £50 per additional class. The amount of the fees has been chosen to meet the requirement of the nature of the fast-track system: it will not become the standard, but must be affordable to smaller businesses.
  
  
• Payment - the additional fee must be paid in full at the time of the electronic filing. The two-month grace period for paying application fees will not be applicable. A change is expected for electronic filing from April 6 2008 for any applications, whether the fast-track examination process is selected or not: the 'period of grace' option of electronic trademark filing will be available only to applicants who have a deposit account. The option to pay online at the time of the filing by debit/credit card or by using a deposit account will remain.
  
  
• Online request - the fast-track system is not applied automatically to any new electronic application, given that the standard online application remains available. Applicants must select the fast-track examination at the time of the application.

The application will be examined and the examination report will be sent by email or fax to the applicant or its representative within 10 business days following the day on which the application is received. The IPO's deadline will run to the day on which the examination report is sent to the applicant or its representative. All non-business days of the IPO will be excluded from the calculation of the 10-day period and any correspondence with the applicant will be treated as urgent.

If the applicant does not comply with the criteria set for a fast-track examination, the application will be treated as a standard electronic filing and will be examined within a normal timeframe (four to six weeks).

If the IPO meets its deadline and no objections are raised, the application will proceed to advertisement for opposition purposes. The three-month opposition period remains the same, but the IPO will try to accelerate its correspondence, in particular during the period between acceptance of the mark and registration. If the IPO meets its deadline but objections are raised, the applicant will have to correspond with the IPO in the normal way, but the IPO will attempt to deal with all correspondence as quickly as possible.

If the IPO does not meet its deadline, the fast-track fee will be refunded (but not the standard application fee). This is confirmed by the new Rule 3A of the Trademarks (Fees) Rules 2000, which reads as follows:

"Where the registrar (a) has received a request for expedited examination of an application for registration of a trademark under Rule 5(1A) of the Trademark Rules 2000, and (b) following the expiry of a period of 10 business days (as specified in a direction given by the registrar under Section 80) beginning on the business day after the date of filing of the application for registration, notifies the applicant, in accordance with Rule 11B of the Trademarks Rules, whether or not it appears to the registrar that the requirements for registration are met, the registrar shall repay the fee specified in the schedule in respect of a request for expedited examination."

In any case, the IPO will aim to deal with correspondence and arrange hearings, if requested, as quickly as possible.

Emilie Scheffer, Hammonds, London