New trademark rules get the go-ahead

United Kingdom

The UK Patent Office has decided to press ahead with the implementation of new trademark rules following feedback from its formal consultation on the proposals. The Trademark (Amendment) Rules 2004 will come into force on May 5 2004 with the aim of helping small and medium-sized enterprises obtain and protect registered trademarks more effectively and at less cost.

The consultation was divided into three sections: "the new opposition procedure", "the new fee structure" and "other technical changes". The most significant proposals were in relation to the new opposition procedure. These proposals and their respective responses included the following:

  • The lengthening of the existing cooling-off period (to allow settlement negotiations to occur) from six months to 12. The idea of lengthening the cooling-off period was generally well received by those responding to the consultation although some parties felt it would be better to have a non-limited period. The Patent Office responded by pointing out that a non-limited cooling-off period could lead to uncertainty for rights holders and protracted negotiations. It is therefore sticking to its original proposal of 12 months.

  • The issuing of preliminary views by the Trademarks Registry, based on a comparison of the trademarks and their respective goods and/or services specifications, on grounds of opposition raised under Section 5(1) and 5(2) of the Trademarks Act 1994. The preliminary views, which by their nature would not be based upon evidence, were criticized by some respondents as being of little value as they would not apply the multi-factorial assessment laid down by case law. Some also felt that issuing a preliminary view could influence the decision made by any final hearing officer. The Patent Office defended the concept as a means of allowing parties to make an informed decision on the commercial viability of moving to a full evidence-based set of proceedings and will press ahead with the implementation.

  • The introduction of a proof of use regime whereby opponents have to show, if requested, use of any earlier trademarks (i) on which the opposition is based, and (ii) which are over five years old at the time the contested trademark is published. A clear majority of respondents were in favour of the introduction of a proof of use regime into the opposition procedure. Under this regime the opponent will be required to make a statement of use in relation to every earlier trademark that is five years old or more, and the applicant will then either accept the statement of use, in which case proof of use will not be required, or it can demand that the opponent provide the proof in the evidence rounds of the proceedings.

More controversial proposals to require applicants in invalidation proceedings to show use of any earlier trademark for the five-year period prior to the publication of the registration under attack have been dropped following concerns that this would be particularly burdensome for small and medium-sized enterprises. Proof of use in invalidation proceedings will be limited to requiring the applicant to show use of any earlier mark for the five-year period preceding the date of application for invalidity.

Since publishing the consultation document the Patent Office has decided to embark upon a review of its fee structure and associated fees before introducing any changes to them. It will, however, go ahead with proposed technical changes, which include giving the Trademarks Registry the power to reject vague terms in specifications and removing the rule that requires an applicant to make a specific colour claim, if colour is intended to form part of a trademark.

A total of four statutory instruments are now being drafted to bring the Patent Office's proposals to fruition by May 5 2004, as are guidance notes for the new procedures, which will be made available on the Patent Office website before the new provisions come into force.

For a background discussion of these proposals, see Patent Office opens consultation period on changes to trademark rules.

Mark A Lubbock, Ashurst, London

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