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Fast-tracking your trade mark

trade mark fast track process
trade mark fast track process

Introduction of new, cheaper Fast-Track Trade Mark Opposition procedure welcomed by SMEs.

Introduction of new, cheaper Fast-Track Trade Mark Opposition procedure welcomed by SMEs.

Of interest to many SMEs will be the launch, on 1 October 2013, of the UK Intellectual Property Office’s new fast-track procedure for opposing UK trade mark applications.  

The new fast-track opposition procedure was launched in response to concerns expressed by many, and particularly SMEs, about the time and cost of conventional trade mark opposition proceedings in the UK.  

The hope is that this cheaper, more streamlined procedure will encourage smaller business and individuals in particular to defend their rights against later-filed UK applications for conflicting marks, where they might previously have been deterred from doing so due to the perceived cost and protracted nature of conventional UK trade mark oppositions.   

The main features of the fast-track opposition procedure are as follows:

•    The fast-track opposition is only be available where grounds are limited to those based on earlier identical mark(s) protected for identical goods/services, earlier identical mark(s) protected for similar goods/services, or earlier similar mark(s) protected for similar goods/services.  The number of earlier marks which can be relied upon in a fast-track opposition is limited to three, and all earlier marks must be registered.

•    The official fee for a fast-track opposition will be £100.  This is the same as the newly-decreased official fee for a conventional opposition where the grounds of opposition are limited to those outlined above.

•    Fast-track oppositions must be filed using the new Form TM7F.  It is not yet possible to file either fast-track or conventional oppositions online.

•    Where a fast-track opposition is based on a trade mark registration that was more than 5 years old at the date of publication of the application under opposition, Proof of Use of the earlier registered mark must be filed together with the Opposition.  A limit has been placed on the volume of evidence that can be filed, and exhibits to the Opposition form must not exceed 100 pages.

•    The fast-track opposition procedure does not include the routine filing of evidence, other than the Proof of Use referred to above, and the permission of the Hearing Officer must be sought by either party should they wish to file additional evidence.  Permission will only be granted in exceptional circumstances.  

•    A fast-track opposition cannot be run in parallel with a conventional opposition in respect of the same application, and Opponents will not be entitled to transfer from the fast-track opposition procedure to the conventional opposition procedure once the Opposition has been filed.  However, where the requirements of a fast-track opposition are not met but the requirements of a conventional opposition are, the Registrar shall have discretion to treat a fast-track opposition as a conventional opposition.

•    Decisions will, in general, be taken on the basis of the parties’ written submissions.  However, provision will be made for an oral hearing where requested by either party and deemed appropriate by the Hearing Officer, or where initiated by a Hearing Officer.  Hearings may be conducted by telephone rather than in person.

•    An appeal fee of £250 has been introduced for both fast-track and conventional oppositions.  This fee will be recoverable by the winning party.

The new fast-track procedure may offer the perfect solution to potential Opponents who are seeking to rely on limited and relatively straight-forward grounds of opposition and do not wish to face the evidential and financial burden that conventional oppositions can bring with them.  

The prospect of getting a decision in fewer than 6 months (and possibly as few as 3 – 4 months) will certainly appeal to many trade mark owners.  However, certain features of the fast-track opposition procedure (for example, the need to provide Proof of Use at the outset, the restrictions on additional evidence and the fact that one cannot switch from a fast-track opposition to a conventional opposition) could prove disadvantageous in certain circumstances.  

It is therefore essential that if you are contemplating opposition and have any doubt as to which opposition procedure might be the most appropriate, you seek the advice of a trade mark attorney so as to ensure that you do not go down the wrong route and risk jeopardising your position. 

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