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Change of UK Trademark Examination Practice

Owners of Community Trademarks have to make an important decision before 1 October 2007. That is the date when the UK will stop examining applications on relative grounds. As explained here, The UK Registry will immediately start allowing other people's trademarks to be advertised for opposition purposes even if they are identical to earlier marks (such applications are already stacking up for advertisement  - the first journal containing these deferred marks will come out on 26 October 2007). For proprietors of UK national registration the UK address for service will be notified, but if the conflicting mark is a Community trademark, they won't breathe a word unless you serve a notice on the UK office and pay them an opt-in fee.

How to Opt-In

Opting in is a very straightforward process. Identify the CTM and decide which email addresses (you can have two) you want the notifications sent to. The UK Registry fee for each CTM opted-in is £50. There is a short grace period until 20 October 2007 to allow time for all the opt-in requests to be processed.

What you Get

For the next three years the Registry will send a notice to the email you specified whenever your CTM is listed in a search for a mark that goes on to advertisement. The renewal period and fee after 1 October 2010 will depend on the cost of running the opt-in scheme. 

Whenever someone uses the the UK search facility to check a possible new mark they will see that your CTM is opted in.  They will give it more weight. Show it more respect. The UK IPO website has lots of ways to find marks protected in the UK and these searches will find CTMs whether they are opted in or not.

When a new application is advertised, a list of marks to which notifications have been sent will be added to the case details accessible on the UK-IPO website, which are accessible from the online advertisement.  This list is not the full search report.  It will exclude community trademarks that did not opt-in. For an example see this mark which was advertised in the first journal of the new regime published on 26 October 2007.

Do You have to Oppose?

No, absolutely not. As with any watch notice its your commercial decision. The receipt of a notice from the UK Trademarks Registry is an opinion that there is "a reasonable chance of success in any opposition" you do choose to file. Allan James committed to maintaining this standard at a public meeting on 3 September 07.

If your CTM will have been registered for more than 5 years when you oppose, you will have to state that you are using it if you oppose.  That use can be elsewhere in Europe.

If you have UK Trademarks or International Registrations protected in the UK

You don't need to opt-in but check that you are still in touch with your address for service and have given instructions how you want these notices delivered. Paper notices will also be sent to the representatives named on International Registrations protected in the UK. These will be sent to representatives outside the UK. You can specify a UK address for service now to receive these notices. No fee. You can also opt-out if you have a watch service in place and don't want the extra information to help you make your opposition decision.

How to Decide

Have you abandoned using the mark - then don't opt in.

Do you consider the UK an unimportant market for your brand - then don't opt in.

Are you so aggressive that everyone knows you oppose even if you have no rights - then don't opt in.

Otherwise we think you should show that you love your CTMs.

Filemot will process your opt-in requirements quickly and cost-effectively  - get in touch.