Relative grounds examination ended for UK marks

United Kingdom

Important changes to the UK trademark examination system come into force today with the implementation of the Trademarks (Relative Grounds) Order 2007. As of today, trademark applications are no longer examined on relative grounds. The change brings the UK registration regime closer in line with that of the Community trademark system.

The introduction of the Community trademark system in 1996 has, bizarrely, meant that it is easier to obtain EU-wide protection than a UK trademark because the only method by which a Community trademark may be rejected on relative grounds is under opposition proceedings. Section 5 of the UK Trademarks Act 1994 states that a trademark cannot be registered if it is identical with, or confusingly similar to, an earlier trademark (as defined in Section 6) or earlier right. Under the old legislation, the registrar was charged with examining whether an application satisfied these requirements. To that end, the registrar was obliged to perform a search of earlier trademarks to identify whether conflicts existed. If conflicting marks were indicated in the search results, the registrar had to raise an objection to registration. If the registrar's objection could not be overcome by the applicant, the application was refused.

Under the new regime, an earlier conflicting trademark will prevent registration of a new mark only if the earlier mark's proprietor, or a licensee of the earlier mark, successfully opposes the application. The Trademarks (Relative Grounds) Order 2007 still anticipates a registrar search as part of the examination process. If the search reveals conflicting rights, the applicant will be given the results so that it can assess whether to withdraw its application. If the applicant proceeds, the owners of earlier UK marks will be informed of the application, giving them the option to oppose. Owners of earlier Community trademarks or international trademarks will need to 'opt-in' to receive such notifications, on payment of a fee of £50.

Inbali Iserles, Ashurst, London

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