October 05, 2007

As of October 1st, major changes to trademark practice in the UK have taken effect. The primary change, as summarized in the first link below from the United Kingdom Intellectual Property Office (“UK IPO”), is that the UK IPO will no longer refuse to register a new trademark application because of the existence of "an earlier conflicting trademark," unless the owner of the earlier mark successfully opposes the new application. Examiner will continue to perform their searches and forward search results to applicants, but “[i]f the examiner considers that there may be any potential earlier conflicting marks already on the register, the applicant must choose between continuing with the application, restricting the list of goods and services to try to overcome the clash with the earlier mark, or withdrawing it.” An applicant who decides to continue prosecution, the UK IPO will notify UK owners of the conflicting marks in the search report when the applied-for mark is published in the Trade Marks Journal, noting that EU owners will need to “opt-in” to receive such notices. According to the UK IPO, “[w]hen the mark is advertised in the Trade Marks Journal, the owners of any earlier marks or rights can oppose the application if they think that the use of the new mark will infringe their earlier mark or right,” and “[i]f there is a successful opposition, the applicant could be liable for costs and may not be able to get their mark registered.” According to Lord Triesman, the Intellectual Property and Quality Minister, “The new system will make it easier for businesses wanting to launch new products and protect them with UK trade marks. It will also help users by aligning the UK regime with the European one.” Summaries of this change and changes to UK trademark opposition practice are provided in the links below.

UK IPO Announcement: LINK
UK IPO “Changes to Examination FACT SHEET” (PDF): LINK
UK IPO “Changes to Opposition FACT SHEET” (PDF): LINK
UK IPO Lord Triesman Press Release: LINK

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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