New UK Trademark Legislation Comes Into Force

by Robin Pilgrim, LawAndTax-News.com, London

05 October 2007

Amendments to Section 5 of the UK's Trade Marks Act 1994 came into force on October 1, the UK Intellectual Property Office has announced.

Speaking with regard to the updated legislation, Intellectual Property and Quality Minister Lord Triesman explained that:

"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."

Under the new regime now in effect, trade mark examiners will no longer automatically refuse applications where there is an earlier similar trade mark. Instead it will be for the holder of the earlier mark to seek to block the application if they so wish. This is intended to ensure that applications will only be blocked where they affect others’ trading interests.

Ian Fletcher, Chief Executive of the UK Intellectual Property Office announced that:

"This is a major change which affects every trade mark holder and applicant. We are confident that having now introduced the amendments we will maintain our high standard of service to all our users."

Explaining the move when it was first announced earlier this year, the UK IP Office stated that:

"After that date (October 1) we will no longer refuse to register a new trade mark application because of an earlier conflicting trade mark, unless the owner of the earlier mark successfully opposes the new application."

"We will still search the relevant registers as part of the examination process and send the applicant the results. If we find there are 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."

It continued:

"If the applicant decides to continue with the application, we will write to the owners of any earlier conflicting marks identified in the search when the application proceeds to publication in the Trade Marks Journal. We will notify the owners of earlier UK marks automatically but EU mark owners will need to request notification by filing in a request form."

"When 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. If there is a successful opposition, the applicant could be liable for costs and may not be able to get their mark registered."

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