Implications of UK abolition of relative grounds refusal

The coming into force of the UK Trademarks (Relative Grounds) Order 2007 has implications not only for the United Kingdom, but also for many jurisdictions which, like the British Virgin Islands (BVI), incorporate parts of the UK trademark regime by statutory reference. As a result of the legislation, the UK Intellectual Property Office (UKIPO) will notify applicants only of similar or identical trademarks on the UK register since, in effect, the UKIPO will no longer refuse applications based on prior rights, also known as relative grounds. One possible outcome is an increasing number of conflicting marks on the UK register, resulting in higher levels of opposition and cancellation proceedings in the United Kingdom.

In contrast to the single registration procedure that exists in many jurisdictions, there are two registration procedures in the BVI. One is based on prior registration in the United Kingdom by producing a certified copy of the UK certificate evidencing the registration. This imports the UK legal regime as far as the privileges and rights in the use of the trademark in respect of the goods for which it is registered in the BVI and, subject to renewal in the BVI, for as long as it remains registered in the United Kingdom. The other registration procedure is completely independent of any external legal system and provides its own system of privileges and rights based on pre-1938 UK trademark legislation. Where a trademark is registered in the BVI based on a prior UK registration, the registration is automatic. Since the coming into force of the new legislation on October 1 2007, it is likely that several confusingly similar or identical trademarks will exist on both the UK and the BVI trademark registers simultaneously as a result of the change in the UK examination process.

With the likelihood of increased cancellation proceedings in the United Kingdom, UK trademark owners will also need to consider a litigation strategy that includes cancellation proceedings in a variety of jurisdictions outside the United Kingdom, including the BVI. Other than non-renewal of the trademark within three months of its expiration in the United Kingdom, the only other means by which a prior UK registration that has been registered in the BVI can be expunged from the BVI register is by application to the court on any of the grounds mutatis mutandis on which the prior UK registration would be cancelled in the United Kingdom.

Therefore, it is important for trademark owners determining or revising their UK brand protection strategy to consider the BVI and other jurisdictions that allow for the automatic registration of prior UK registrations as part of either their global watching service, global network of registrations or litigation strategy for cancellation proceedings.

Jamal S Smith, Harneys, Tortola