Trade Mark Examination

The most common reasons for rejection of new trade marks are that the mark is not sufficiently distinctive or that it is likely to be confused with another mark owned by someone else. Since October 2007 the second of these grounds has become less of a problem.

Background

UK trade mark legislation has always placed a responsibility on the Trade Marks Registry to maintain the purity of the Register. In the interests of protecting the public against confusion about the origin of goods or services, the Registry has had a statutory duty to refuse registration of any marks which could be confused with existing trade marks.

When the Community Trade Mark system came into existence it adopted the so-called Benelux model, which places the responsibility upon existing trade mark owners to object to new trade marks. This is said to better reflect the true position in the marketplace because (it is claimed) oppositions will only be filed if a true commercial conflict is perceived to exist.

As a result, two different registration systems have co-existed, based on different examination criteria, both of which may result in protection in the United Kingdom.

The New Procedure

Since October 2007 the UK Trade Marks Registry no longer raises objections based on existing trade marks.*

If examination reveals any potentially conflicting marks the Registry sends the Applicant a letter identifying the earlier marks which are thought to conflict. The Applicant can respond in various ways, principally:

• withdraw the application
• restrict the goods or services to remove any which potentially conflict
• attempt to persuade the Registry, by argument, that no conflict exists
• do nothing and see what happens

If the application is not withdrawn, the trade mark will proceed to advertisement in the on-line electronic Trade Marks Journal. The Registry will send notifications to the owners of conflicting registrations at their last known correspondence address, although not all trade mark owners will be notified.

Owners of prior UK national registrations which have not expired will automatically receive such notifications. However, owners of Community Trade Marks will only be notified if they have "opted in" to receive notifications. It should be noted however that people may still become aware of new trade marks even if they do not receive notifications since the electronic Journal is frequently consulted by trade mark owners.

If anyone wishes to object to registration of a new trade mark they must commence opposition proceedings within three months from the date of advertisement. If no oppositions are lodged the new mark will normally proceed to registration shortly after the opposition period expires.

If an opposition is lodged the Registry will assess whether the application should be refused based on the existing well-established tests for deciding whether a potential conflict exists.

* It is important to note that the Registry may still raise other objections of its own accord on "absolute" grounds, for example, because a mark is not considered distinctive.

Who Will Benefit?

The new system has a significant advantage over the old system, which is that inactive marks remaining on the Register will no longer block a similar mark. Since trade marks are only subject to renewal at ten year intervals, a significant proportion of registered trade marks are not being used, and they may never be used because they are no longer wanted or perhaps the owners have gone out of business.

On the other hand, it is difficult to avoid the conclusion that the new system will strongly favour large corporate trade mark owners and disadvantage small owners.

Individuals and small companies may find the cost of even a single trade mark opposition daunting. Apart from a substantial official fee it is also necessary to submit a carefully constructed legal case together with evidence in support of any facts relied on. Faced with the prospect of a constant stream of oppositions to protect a good trade mark small trade mark owners could not be blamed for simply giving in to an inevitable erosion of market distinctiveness.

On the other hand, large organisations usually set aside funds for protecting their trade marks, and the new system undoubtedly makes it easier for them to encroach onto the territory of a smaller competitor if they are so inclined.

It is also inevitable that the registration process will generally become slower, more complicated and more expensive because of the increased number of oppositions.

© Craske & Co., 2008

Last updated: 27 December 2010