Trademarks (Relative Grounds) Order 2007 published

United Kingdom

The UK Intellectual Property Office (IPO) (previously known as the Patent Office) has published the Trademarks (Relative Grounds) Order 2007, draft legislation that is expected to be introduced in October 2007. The legislation changes the way in which applications for new UK trademarks are examined against earlier conflicting marks, chiefly by abolishing relative grounds checks. It thereby brings the UK registration regime closer in line with that of Community trademarks.

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 current legislation, the registrar is charged with examining whether an application satisfies these requirements. To that end, the registrar is obliged to perform a search of earlier trademarks to identify whether conflicts exist. If conflicting marks are indicated in the search results, the registrar must raise an objection to registration. If the registrar's objection cannot be overcome by the applicant, the application is refused.

The new order abolishes relative grounds checks by removing the registrar's search and objection obligations. 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. This brings the UK regime closer into line with the examination system for Community trademarks. The order 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 probably need to 'opt-in' to receive such notifications on payment of a fee. The IPO is currently consulting on the fee and period that this would cover - its consultation concludes on June 20 2007.

Inbali Iserles, Ashurst, London

Unlock unlimited access to all WTR content