Patent Office opens consultation period on changes to trademark rules

United Kingdom

The UK Patent Office (PO) has issued a consultation paper and opened a formal consultation period on its proposed changes to the rules relating to, among other things, (i) oppositions to trademark registrations, and (ii) the opposition fee structure.

The aim of the consultation is to canvass views on rule change proposals, which are largely based on responses received from an earlier informal consultation paper entitled Reflecting your views. In the new consultation paper, the PO sets out its aims to streamline the opposition procedure, making it more cost effective and user-friendly.

The PO is proposing to extend the current maximum six-month cooling-off period (consisting of two separately requested three-month periods) to nine months in addition to the initial three-month statutory period. With this proposal comes the addition of a new rule to enable the opponent to terminate the cooling-off period if negotiations break down.

There is also a proposal that, in certain cases, the Trademarks Registry can be asked to provide a preliminary decision on the likely outcome of an opposition dispute. This will not undermine the right of any party to file evidence and is essentially a straightforward comparison of the trademarks, and their respective goods and services. Although the PO acknowledges this may worry some people, it has indicated that the principal hearing officer will not be influenced by this preliminary view.

Another notable proposal is a change in procedure to allow an applicant to request that an opponent shows use of any earlier trademark upon which its opposition is based where that trademark is more than five years old. This proposal is intended to bring the PO's practice in line with that of the Office for Harmonization in the Internal Market, where the opponent must show that the earlier mark is not susceptible to revocation based on non-use.

Further changes are proposed to the existing fee structure. These include:

  • increasing the opposition fee from £200 to £300;

  • the introduction of a fee of £50 for the filing of evidence in inter partes disputes; and

  • the introduction of a fee of £200 for filing an appeal to the appointed person.

Other more technical changes include amendments to the rules on filing colour trademarks and a liberalization of the rules to permit EU addresses for service.

The deadline for submitting comments is December 22 2003.

Andrew Southam, DLA, London

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