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