Slow take-up of fast track opposition policy

New trade mark procedures still lacking, says Dawn Moodie

The first fast track opposition decision was related to register the trade mark e-Vap for electronic cigarettes. Picture: AP

The United Kingdom Intellectual Property Office (UKIPO) is the official body responsible for intellectual property including trade marks in the UK.

Over the past years the UKIPO has adopted a policy of becoming more “user friendly” and has introduced procedures to make it easier, quicker and cheaper to register trade marks and to take or defend actions which come under its remit.

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One of the drivers for the above policy has been to make it easier for “private applicants” ie individuals or companies to deal direct with the UKIPO without the need to engage professionals – in particular trade mark and patent attorneys or solicitors. According to the UKIPO, some 63 per cent of all UK trade mark applications filed in the financial year 2013-2014 were by private applicants.

One such recent initiative by the UKIPO has been the introduction of a new fast track trade mark opposition procedure on 1 October, 2013. Key attractions are that the standard official opposition fee of £200 is halved to £100 and cases should be determined within six months instead of 12-18 months in standard oppositions.

Policing the Trade Mark Register and opposing third party marks is extremely important for trade mark owners. Since 2007 the UKIPO has no longer had the power to refuse new marks on the basis of earlier similar marks. This is the case even when the respective marks are completely identical and cover identical goods or services. Instead, the UKIPO operates a “notification” procedure whereby it informs the owners of earlier trade marks when a later conflicting trade mark is published for opposition purposes. The onus is very much on trade mark owners to oppose.

There are limitations to the fast track procedure. It is only available in straightforward cases where the marks and goods/services are identical or similar (ie where there is a likelihood of confusion). The opponent is only able to base opposition on a maximum of three earlier registered marks. If there are further marks on which it wishes to rely and/or pending or unregistered marks, it must use the standard procedure.

If opposition is based on a mark that has been registered for five years or more, the opponent must prove use of its mark when filing opposition instead of later as in the standard oppositions. Procedure is also simplified with no automatic right to file evidence and the official decision being made on the papers rather than the parties attending a hearing.

The UKIPO said at the end of March that only 10 per cent of all oppositions had been filed under the fast track procedure which is disappointing.

The first “fast track” opposition decision issued on 6 March, 2014 was related to an application to register the trade mark e-Vap for electronic cigarettes opposed on the basis of an earlier registration for the mark E-Vape (logo) covering identical goods. Not surprisingly, the opposition was successful and the applicant was ordered to pay costs of £800.

So why has the take-up of fast track opposition been so low? In my view, this is because oppositions are rarely straightforward and it may not be sensible for an opponent to limit its case at the outset. In many cases, it will be appropriate to rely on pending applications and unregistered or so-called “common law” marks. The requirement for filing proof of use upon opposition is also onerous and the necessary evidence is frequently not available by the deadline.

Many opposition cases turn on the evidence the opponent can file. For example, the opponent may wish to demonstrate that its trade mark is entitled to “enhanced” protection by virtue of longstanding use and reputation. A further gap in the fast track procedure is that it cannot be used to oppose a mark which has been filed for dissimilar goods or services – even a well-known mark such as Coca-Cola could not be used as a basis for opposition against Coca-Cola for different goods in the absence of registration for the identical or similar goods.

Indeed, completely straightforward cases are rare and a trade mark owner may not be aware of the nuances and possible strengths and weaknesses of its case. This is where expert advice can be invaluable. It will be interesting to see how the new fast track procedure pans out and whether the initial poor take-up of 10 per cent improves.

• Dawn Moodie is a registered trade mark attorney and European trade mark attorney at Marks & Clerk