UK IPO Streamlines Trade Mark Registration Process

by Robin Pilgrim, LawAndTax-News.com, London

08 July 2009

The UK Intellectual Property Office (UK IPO) has announced a number of new proposals that will make it cheaper and easier for businesses to register trade marks.

The proposals, due to be implemented in October this year, have been drawn up in response to the consultation paper ‘helping businesses register trade marks and patents’ and are aimed at strengthening business competitiveness throughout the UK.

"We are committed to supporting businesses in these difficult economic times, and our Right Start and E-filing initiatives make it easier and cheaper for trade mark owners, and in particular small businesses, to register and protect their brands,” said David Lammy, Minister of State for Intellectual Property.

"Registering a trade mark is an important step for a business to take. By protecting their intellectual property they are protecting their innovative ideas of the future,” Lammy added.

Proposals to be introduced include:

• A ‘Right Start’ service for trade marks. A business using the new 'Right Start' service will be able to defer payment of half the usual GBP200 trade mark application fee until after it has seen the Intellectual Property Office's assessment of whether the mark can be registered. If there are any problems, the business will have an opportunity to informally discuss them with the trade mark examiner before deciding whether to proceed with the application and pay the balance of the fees.
• An E-filing initiative. This will offer a GBP30 reduction in application fees for e-filed trade marks where the full discounted fee is paid at the time of filing and a GBP10 reduction in the application fee for e-filed patent applications. It also offers reduced fees for e-filed patent search and examination requests.

The review of trademark-related fees and services was prompted by a decrease in demand for patent and trademark applications in the UK, (down 12% in 2008) with other trade mark offices, including the European trade mark office, also seeing reductions.

A fee reduction for applications to the European trade mark office was agreed by the EU member states in March, a move supported by the UK.

Eight proposals were included within the consultation, which was launched in March 2009. They included:

• Introduce an "Early Assist" (now termed Right Start) service for trade marks.
• Offer a reduction in the application fees for e-filed trademarks and discounts for e-filed patent applications, and for patent search or examination requests.
• Abolish applications for series of trade marks or introduce a fee supplement of GBP50 for each mark in a series beyond the first two.
• Withdraw the trade marks fast-track service altogether or allow its suspension.
• Reduce the trade mark opposition fee from GBP200 to GBP100.
• Increase the fee for extensions of time requests made on form TM9 in trade mark cases from GBP50 to GBP100.
• Introduce a fee of GBP100 for extensions of the nine month cooling-off period in trade mark opposition cases.
• Introduce a fee of GBP100 for requests to stay trade mark proceedings made outside of the cooling-off procedure.

After considering the consultation responses, of which there were 16, the UK IPO decided to proceed with the following exceptions:

• For series of trade marks, Intellectual Property Office will introduce a fee supplement of GBP50 for each mark in a series beyond the first two rather than abolish series marks.
• Intellectual Property Office will allow suspension of the fast-track service rather than abolish it.
• The proposed reduction of the opposition fee from GBP200 to GBP100 was opposed on the grounds that it would encourage vexatious oppositions and will not be taken forward.
• introduction of a fee for extending the cooling off period was opposed on the grounds that it would hinder negotiated settlements and is not being taken forward.
• Introduction of a fee to stay proceedings not being taken forward for same reason.

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