Getting up-to-speed with fast track trade mark opposition

Will the new fast track procedure for trade mark opposition be a blessing for SMEs?

The government has introduced new fast track procedure enabling trade mark owners to oppose trade mark applications at an affordable cost. The changes will have effect from 1 October 2013.

Why is there a new fast track trade mark opposition procedure?

The fast track procedure is intended to make trade mark oppositions via the UK Intellectual Property Office (IPO) a more attractive option, especially to SMEs. A change to trade mark law in 2007 meant that the registrar of trade marks no longer refused applications for trade marks which appeared to conflict with an earlier UK or EU trade mark. Instead the burden shifted to trade mark owners to oppose the registration of conflicting marks (albeit that the IPO carries out searches and notifies prospective opponents). This change in policy has led to concerns that trade mark oppositions are unaffordable or unduly time consuming, particularly for small businesses. The new fast track is intended to simplify the process and make oppositions quicker, cheaper and easier. Under the existing procedure, it typically takes 18 months from notice of opposition to the registrar’s decision. The aim is that the fast track opposition, available as of 1 October 2013, will take around six months. The fast track procedure is set out in the Trade Mark (Fast Track Opposition) (Amendment) Rules 2013 SI 2013/2235 which amend the Trade Mark Rules 2008, SI 2008/1797.

Can the fast track procedure be used for all types of trade mark oppositions?

No. The fast track is restricted to the following types of opposition:

1. The applied for trade mark is identical to the registered trade mark relied upon by the opponent (s 5(1) Trade Marks Act 1994 (TMA))
2. Under s 5(2) TMA where the applied-for mark is:
3. 1. ◦(i) identical or similar, and
   2. ◦(ii) is to be registered for an identical or similar scope of goods and services, and
   3. ◦(iii) there is a likelihood of confusion between the earlier mark and the application mark

An opposition based on detriment to the earlier mark (s 5(3) TMA) is generally more complex, involves submission of evidence and is not permitted on the fast track. This restriction might help discourage the ‘kitchen sink’ approach whereby an opponent cites every possible ground and enters superfluous evidence when actually the grounds under s 5(1) and 5(2) are sufficient to determine the outcome. The opponent can rely on a maximum of three earlier trade mark registrations. Therefore if the opponent wants to rely on unregistered rights (eg goodwill built up in a trading name) or on a whole portfolio of trade marks—the fast track route is not available.

How does the fast track procedure work?

The fast track procedure is an expedited version of the existing trade mark opposition procedure but there are some key changes.

Evidence

The formal evidence rounds in a normal opposition do not feature in the fast track although the parties can request leave to file additional evidence during proceedings. The omission of evidence rounds should help to speed up the process, particularly as many trade mark oppositions are not complex and do not require the submission and examination of extensive evidence. In many oppositions the evidence filed does not serve what is ultimately an assessment of similarity between two trade marks.

Hearings

Hearings before the registrar will be the exception rather than the norm under the fast track procedure. Under the new rules, the parties can have an oral hearing only if the registrar deems it necessary. Most proceedings will be dealt with on paper and/or by teleconference.

Proof of use

If an opponent is relying on a trade mark registration that is over five years old, they are required by law to prove that the trade mark is still being used. Under the fast track procedure, an opponent must file evidence of use when it files the notice of opposition and statement of grounds. There has been some criticism that this new rule puts a heavy burden on the opponent to assemble and file evidence in a short time frame. Under the normal procedure, evidence of use does not need to be filed at the outset. Considering an opponent only has two months from the date of publication of a trade mark application to file a statement of opposition, it is easy to see that an SME could struggle to additionally file the required evidence.

Forms and fees

Fast track oppositions can be filed online using the new form TM7F. One of the IPO’s recommendations was to reduce the existing opposition fee of £200 which could act as a deterrent to filing an opposition. The fee for a fast track opposition is £100. The fee for a standard opposition is £100 if the grounds relied on are sections 5(1) and/or section 5(2) but if another ground is relied on the fee is £200. These fees pale in comparison to likely legal fees incurred but the hope is that an SME can bring a straightforward opposition without legal advice.

Should lawyers be recommending fast track to their clients?

Certainly in the case of straightforward oppositions, the fast track is advisable although how effective it is in practice remains to be seen. Costs are likely to be significantly reduced and opponents should face fewer delays. However, in more complex cases where arguing similarity is tricky, or the opponent wants to plead it has a strong reputation in its trade mark(s) or there is evidence of use to be taken into account the traditional procedure which allows for an oral hearing may be the preferred route. Jessica Stretch, solicitor in the Lexis®PSL IP & IT team.