Trademark Examination Process in UK
The trademark examination system which has been controversial is going to be changed from October 1, 2007, as proposed by the UK Intellectual Property Office (UKIPO). Under the Trademark Act 1994, trademark applications for registration undergo a full examination on both absolute and relative grounds and registration is confusingly refused. At present, an applicant has to perform a trademark search of earlier registered trademarks
in both the UK national register and the Community trademark (CTM) register, raising an objection if it is discovered that similar marks covering similar goods or services already exists. If the applicant of the later mark is unable to overcome the objection, the registration is refused on relative grounds. However, where an application is made to the Office for Harmonization in the Internal Market (OHIM) for a CTM, OHIM does not raise an objection on the basis of earlier rights. Instead, OHIM will refuse to register a CTM on relative grounds only if the owner of the earlier right brings a successful opposition against the proposed registration. This leads to the Community Trade Mark register containing conflicting rights between the CTM and the UK register. So, this prompted the UKIPO to bring out certain changes in trademark examination process and launched a consultation in 2005 seeking comments from users as to whether they shared the registery’s perceptions of the UK system’s shortcomings.
After the receipt of views from the large number of users, the UKIPO proposed the abolition of the formal assessment of a trademark applications on relative grounds. Under the new law which will come into force from October 1, 2007, the registry will still perform a trademark search for similar or identical trademarks, but this time the examiner will notify the applicant of the results for information.
Although many pits and falls are evinced in the system, but the fact is that the owners of earlier trademarks do not have to monitor new trademark applications and actively oppose them. In addition, they do not have to pay for a commercial search service to ensure that their applications do not conflict with an earlier mark before registration. It will be important for trademark owners to act on registry notifications, objecting where appropriate.
The UKIPO hopes that the new system will reduce the costs involved in prosecuting UK trademark applications and will work in line with most of the countries in the European Union.
For any
queries relating to our services and costs, please feel free to
contact us at info@iprfirm.com.
IPR
FIRM.COM - Online IPR Law Firm, India – Trade Marks, Copyright Registration,
Delhi, India
| | |
(c) IPR Firm, 2007.
|
