NEW FAST TRACK TRADE MARK OPPOSITION PROCEDURE IN THE UK
02 December 2013
The fast track opposition procedure differs from the standard opposition procedure in a number of ways:
- It limits the grounds which can be raised to those based on earlier identical or similar trade marks which are registered for identical or similar goods or services to the opposed trade mark, and for which there is a likelihood of confusion with the opposed trade mark.
- There will be a reduced official fee for filing the opposition.
- The fast track opposition can be filed only by the owner of earlier registered marks, and no more than three such registrations can be relied upon.
- The Opponent will need to file proof of use at the time of filing the opposition if the earlier registration(s) relied upon have been registered for more than five years at the time of publication of the opposed trade mark application.
- Further evidence to support a party's case will not normally be required, but it will be possible for the parties to file such evidence if the UK IPO provides its consent. A decision will usually be made on the basis of the papers and it is likely that the UK IPO will be reluctant to allow oral hearings.
- It is anticipated that a decision should be issued in a period of six months or less.
- It will be possible to appeal the Registrar's decision in the same way as a standard opposition decision.
If the registered trade marks relied upon are more than five years old at the time of publication of the opposed application, costs will probably be higher at the outset, as it would be necessary to file evidence of use of the mark(s) when filing the opposition. In these instances, we consider that a standard opposition may be the preferred option.
If it is intended to rely upon additional grounds as the basis for an opposition, such as (i) the fact that the earlier registered mark has a reputation in the UK, and use of the opposed mark would be detrimental to the distinctive character of the earlier mark, or (ii) there are grounds for claiming "passing-off", then it would be necessary to file a standard opposition.
If you would like to know more about the new "fast track" opposition procedure, please do not hesitate to contact Sanjay Kapur, John Peacock, Lucy Mills or Katie Smith.