March 2008
The Trade Mark Rules 2000 - Consultation Paper
The Trade Mark Rules have been amended seven times since 2000. The UK Intellectual Property Office (“UKIPO”) has recently issued a Consultation Paper on the Modernisation and Consolidation of these Rules.
The proposals aim to bring the Rules into line with the Singapore Treaty adopted within EU countries in March 2006. It aims to remove confusion and duplication from the system, to increase the speed of Applications and reduce costs, in essence to make the whole process more efficient.
The Singapore Treaty revised the Trade Mark Treaty 1994, by recognising Trade Marks that were more than two dimensional labels, such as motion, colour, and non-visible signs. It also provided for various electronic forms of registration, the recording of licences and standardised the trade mark industry procedures.
Until 1994, an unopposed trade mark would have been approved after a month. From 1994, this was changed to a fixed period of three months for all applications. Less than 10% of applications are opposed, and the UKIPO have indicated that the registration of 90% of published trade marks is delayed for three months for no productive purpose.
The UKIPO has therefore proposed two solutions. The first is that the fixed opposition period is reduced to two months; the second is that there be a period of six weeks in which some notice of intention to oppose should be registered, failing which a trade mark would be granted.
The UKIPO is seeking public consultation on the following matters:
- Introducing the requirement for an address for service in the UK, EEA or Channel Islands in contested trade mark proceedings.
- Speeding up by 7 weeks the time taken to register the majority of new trade marks
- Whether having a fixed two-month opposition period combined with a cooling off period of up to 18 months will provide sufficient opportunities to avoid and resolve litigation.
- Whether the length of the cooling off period should be more flexible.
- Whether the cooling off period should be 9 months initially, and extendible to 18?
- Whether the cooling off period be subject only to compliance with the requirements that 1) it is sought within the initial 9 month period, 2) it is agreed by the parties, and 3) the request is accompanied by a statement supported by a statement of truth confirming that the parties are negotiating a settlement.
- Alternative ideas as to how the current opposition/cooling off arrangements could be improved.
- Whether in non-use revocation cases should the normal rule be that proprietors have one (extendible) period in which to file all their evidence of use.
- The time period allowed for applying for reinstatement.
- Trade Mark Regulation.
- Faster publication of new applications.
- Whether priority documents should be required to support a priority claim where there is a third party opposition or invalidation.
The deadline for responses to the consultation document is 26 May 2008.
Briffa Comment
The proposed consultation document is a sensible and proactive move on the part of the UKIPO and is overdue. This will bring the UK in line with the Singapore Treaty and update the current legislation.
The opposition period differs according to the jurisdiction in which a trade mark is applied, between two and three months. Most European member states have a two months opposition period, and it would thus bring the UK in line with the accepted European standard.
With the present cooling off period being 12 months, this does not encourage parties to resolve matters. A period of 9 months would provide more impetus for parties to negotiate a settlement. In any event, this period can be extended for a further 9 months if both parties can establish that they are actively trying to reach a settlement, and can provide a statement of truth attesting to this.