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New UK Rules Affect all Trade Mark Owners

What are Trade Mark Rules?

TM Rules are the main piece of secondary legislation that governs the process and administration of the trade marks system. The Trade Mark Rules 2008 came into effect on 1st October. They represent a consolidation of various amendments to the previous set of rules and also include a number of policy changes. Some of these changes are aimed at speeding up the process of obtaining registration of trade marks.

What are the changes?

Here is a summary of the main changes brought in by the new Rules:

1. The Opposition Period is reduced from 3 months to 2 months.

• Although the process of a trade mark application is unaffected the time limit within which an application may be opposed has been reduced.
• At present 90% of applications are unopposed. So 90% of applicants will see a one month reduction in the time to registration.
• For the owners of prior rights who are thinking about opposing an earlier decision an action needs to be taken. Many oppositions are filed close to the deadline and so greater diligence needs to be taken from now on.
• If the potential opponent cannot make a decision within 2 months then a one month extension of the opposition period can be obtained as of right.
• The new opposition period applies to all UK applications published for opposition purposes after 1st October 2008.

2. The Period for Filing Counterstatements

• The period for filing a counterstatement in opposition proceedings is also reduced from three to two months.
• In addition, the period for filing counterstatements in revocation and invalidity proceedings is also now 2 months. This is an increase from the previous 6 weeks and designed for consistency in similar proceedings.
• In certain circumstances it may be possible to file the counterstatement after the deadline. At the moment there is no discretion to admit a late-filed counterstatement.

3. Cooling-off Period

• After filing an opposition it is possible to apply for a ‘cooling-off’ period so that negotiations for settlement may take place.  Both parties need to agree to this.
• The ‘cooling off’ period has been reduced from 12 to 9 months.
• This may however be extended by a further 9 months with the agreement of both parties.

4. Fast Track Application Process

• The fast track process has been available since October 2007, but there have been no formal rules governing the administration of it.
• These are now formalised in the new rules.
• It is expected that with the newly reduced opposition period, the fast track system will become increasingly popular.
• The fast track system allows your application to be dealt with in a matter of days after filing it. Once accepted it still needs to be published for opposition purposes.

5. Preliminary Indications

• If an opposition is based on an earlier trade mark registration then the UK-IPO will give a preliminary indication of the likely outcome of the opposition. If the decision is against the opponent he previously had to file a form to continue with the opposition or the opposition in its entirety was deemed withdrawn. As of 1st October, if no form is filed by the opponent, only the part of the opposition that is based on the earlier registration(s), and found not to be similar, will be deemed withdrawn.
• Best practice here will be to continue to file forms if an opposition is to be continued.

6. Evidence and case management

• The rules give the UK-IPO the power to set a timetable for opposition proceedings and to decide which disputed facts and other issues require evidence.
• This is an attempt to eliminate delaying tactics and the swamping of the UK-IPO and the other party with irrelevant evidence.

7. Revocation on grounds of non-use.

• When a trade mark has been registered for more than 5 years it can be challenged by a third party using the Revocation process.
• An application for revocation puts the onus on the trade mark owner to provide that the trade mark has been used.
• Under the new rules, the Applicant for Revocation does not need to supply a statement of grounds. An application form and a fee will be all that is required from 1st October.
• Also, the registered proprietor will be given only one opportunity to provide evidence of use of the trade mark.
• The UK-IPO has power to set aside a decision to revoke a trade mark registration if the proprietor can prove that he was unaware that his trade mark was under attack.

8. Retrospective Extensions of time in application proceedings

• In line with obligations on the UK by the Trade Mark Law Treaty of 2006, it is now possible to apply for a retrospective extension of time if a deadline has been missed.
• In practice, the UK-IPO was always "flexible" in these matters, but the new rules make the extension available as of right.

9. Period of time for remedying deficiencies in the application

• This period is reduced from two to one month. There are two main implications of this change:
• We can pay the application fee after the application has been filed. This has to be done within one month. (In practice, we always pay the fee when the application is filed from the deposit account we have at the UK-IPO).
• Queries raised on the terminology and classification of the list of goods and services will need to be resolved within a month of them being raised.
• This is all part of trying to speed up the application process.

10. Address for service

• The Rules maintain the position that parties to opposition proceedings must have an address for service in the UK.
• This means that applicants or opponents need to appoint a Trade Mark Attorney (or other representative) to deal with the UK-IPO.

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