Launch of New U.K. Trademark Rules

Steering UK-IPO cases became a bit easier on 1 October 2008, when a new set of trademark rules came into force. The new rules consolidate the multiple statutory instruments governing IPO trademark procedure, and introduce new provisions designed to speed up registration and to reconcile some of the more strident rules on non-use cancellation and default judgments with the realities of business.  

The principal changes are:

• A shorter opposition term of 2 months, extendible to 3;

• Cooling-off periods reduced from 12 to 9 months, extendible by a further 9 months;

• In non-use revocations, a single, extendible term of at least 2 months after the counterstatement is filed for evidence of use, instead of the current unextendible 3-month term for both counterstatement and evidence;

• Where an application or registration is struck off in undefended proceedings, the applicant or proprietor may apply within 6 months for the decision to be set aside and the rights reinstated, subject to the Registrar's discretion to set terms and conditions to limit possible prejudice to third parties;

• No further separate appeals against interim decisions, unless the interim issue is likely to be determinative;

• No continuing need for certified copies to support priority claims, although the IPO will retain the power to call upon applicants to submit documents, which need not necessarily be certified copies, to verify such claims.

Many of the changes are clearly welcome: for example, making the term for filing evidence of use in revocation proceedings extendible is sensible given the draconian consequences of failure to provide adequate evidence within the term, and the very real challenges faced by some businesses in gathering such evidence. Likewise, the provision for set-aside where undefended applications and registrations are struck off is equitable and will provide for those cases where right holders, for genuine reasons, only become aware of an action too late to defend it. The elimination of the requirement for certified copies to support priority claims simplifies filing, reduces costs and brings the UK-IPO into line with OHIM's more flexible practice.

Time will tell whether all the changes will be so beneficial. Reducing the opposition term will increase pressure on potential opponents and sits uneasily with the potential cost consequences of failing to give reasonable notice before an opposition is filed. The new extension provision is likely to create an administrative burden for professional firms and industry alike. In cases where marks are unopposed, this change may speed up the registration process by one month, but whether this benefit outweighs the practical and administrative problems remains to be seen.  

Nonetheless, the consolidated rules are simpler to consult than the existing multiple statutory instruments, and the new rules are therefore welcomed. Brand owners and their advisors now need to prepare for a new and somewhat faster-paced regime.