August 2005
Patent Office Propose Change to UK Trade Mark Examination Process
There is a feverish debate erupting with regard to Patent Office proposals to change the way that UK trade mark applications are examined.
Currently applications are examined on two sets of grounds:
1) Absolute Grounds. i.e. does the mark comply with trade mark law in relation to what is capable of registration and
2) Relative Grounds i.e. does the application conflict with any marks that are already on the UK or European registers.
Under a new proposal it has been suggested that The Patent Office may cease to examine new applications on relative grounds meaning that an existing mark alone would not be enough to prevent a new mark being entered onto the trade mark register.
This isn't a particularly radical idea as the UK is one of the only European countries that pays so much attention to examination as it is. Many countries including the central European trade mark office (OHIM) in Alicante already only examine on absolute grounds. The proposals are not yet agreed or accepted and would be the subject of government review before being implemented.
What does the proposal mean for existing trade mark owners?
It has been suggested that trade marks may enter onto the register and obtain registered status that in the past may have been considered to have infringed the rights of the existing mark owner.
If the proposals proceed it will be very much the onus of the mark owner to police their own rights and enforce their existing registered rights if need be since unless opposed the mark will reach registered status. It will become most important for existing trade mark owners to ensure that they are keeping a close eye on the new applications that are being made.
What does the proposal mean for new applicants?
At face value this proposal would look to be very beneficial for new applicants as their applications will not be examined to the level of detail that they currently are. This may mean that marks become registered more easily. Ultimately however this may also lead to weaker trade mark rights since many people will be able to obtain registered rights which may still conflict and could even result in infringement proceedings. Ultimately the worry is that this will devalue the trade mark process.
BRIFFA Comment:
If this proposal is put into practice trade mark owners will need to become much more responsible for protecting their own trade marks.
Briffa always recommend that trade mark owners implement a watching service that alerts them to any applications that are potentially similar to or conflicting with their existing marks. This service means that it is possible to oppose an application before it becomes registered rather than fighting to get it removed from the register after it has been granted. A UK watching service does not need to be an expensive process and can be implemented simply and effectively through Briffa.
Briffa's BrandProtect insurance scheme means that trade mark owners have access to legal assistance to fight infringements of their marks therefore in the event that you are concerned that one of your registered marks is being infringed and you have Brandprotect insurance in place the means will be there for us to work with you to quickly address the problem before it damages your brand.
Please do contact us for further information.