No change to trademark examination system until 2006

United Kingdom

Some 18 months after the closure of a consultation period on a paper entitled Future of Official Examination on Relative Grounds, the UK Patent Office has announced its plans for the trademark examination system. As a result of the response to the review, it will be maintaining the current system for examining trademark applications until at least 2006.

Section 8 of the Trademarks Act 1994 makes provision for changes to the United Kingdom's trademark examination procedure by 2006, which is the tenth anniversary of the introduction of the Community trademark system. In 2000 a Patent Office review recommended improving the level of consistency between the UK and Community trademark systems. The review noted that the Office for Harmonization in the Internal Market, which governs Community trademark registration, does not allow objections on the grounds of prior registered conflicting marks (ie, relative grounds) in its examination system. Thus, it suggested that the Patent Office also cease refusing applications on relative grounds. Following this review, the Patent Office decided to release a consultation paper entitled Future of Official Examination on Relative Grounds, asking whether the proposed changes to the UK system, particularly the abolition of examination on relative grounds, should be brought forward.

The majority of those who responded to the paper were against early change. Of the 122 responses, 63% believed that the current system (ie, a search and examination system and opposition procedure based on relative grounds for refusal where conflicts exist) should continue. A number of respondents were concerned by the fact that ending the system of official examination on relative grounds would require trademark owners wishing to prevent the registration of confusingly similar marks by other parties to file an opposition at the UK Trademarks Registry. They feared that the introduction of an opposition-based system in the United Kingdom would increase search costs and cause problems for small businesses unable to afford subscriptions to trademark watching services.

Moreover, 69% of respondents said that if there were an end to examination on relative grounds, there would be very little savings for applicants. In the view of the majority, without a fall in application fees, any savings would be overtaken by attorney fees.

It is worth noting, however, that 72% of the respondents indicated that while they wanted the current system to remain, they felt that it should be reviewed at a later date.

The Patent Office looks likely to go ahead with streamlining the procedures for trademark oppositions, as they are more expensive and cumbersome in the United Kingdom than in most competitor countries. A new consultation paper is now available. Informal consultation on trademark rules outlines proposals aimed at reducing the cost and effort involved for both parties in opposition cases. The Patent Office is hoping that if it can make a more streamlined opposition procedure work, it will be able to avoid the envisaged disadvantages caused by changes to the examination system.

Chris McLeod, Hammonds, London

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