21 March 2019 - Article
Reminder… Change now in effect
The UK Intellectual Property Office (UKIPO) has introduced from October 2007 a new way of processing and examining trade mark applications. These changes mean that trade mark owners now need to take steps to prevent the registration of similar or identical marks to their own registered trade marks at the application state rather than relying on the UKIPO to prevent registration as before.
Previously the UKIPO would itself examine a trademark application to assess whether the words, logo or other sign were or was identical or similar to any pre-existing trade marks. For example, if you applied for the word PHORENSIX as a trade mark, UKIPO would examine the register and itself produce a report of any similar or identical marks found such as “FORENSICS”, or “PHORENSICS”. The same process would apply to logos and other signs. The application could not proceed until any objections arising from that search were dealt with.
From October 2007, this will no longer happen. UKIPO will now only consider an application’s registrability on absolute grounds i.e., whether the mark applied for is inherently capable of being a trade mark, and not on grounds of whether it is similar or identical to any other pre-existing marks on the register.
What This Means For You
If you own existing trade marks on the register then you need to take on the role of examining trade mark applications for identity or similarity with your own trade marks. If you do not already have arrangements for a trade mark watching service then you should contact your trade mark attorney to arrange one as soon as possible. As part of this service the trade mark attorney will regularly examine the notices of new trade mark applications to highlight any applications for marks similar or identical to your own trade marks. They will notify you of any that are similar and allow you to take steps to oppose the registration of these applications. The UKIPO will then consider your opposition thereby giving you an opportunity to ensure that your rights remain fully protected.
These services vary in price but the costs are comparatively modest. No matter for how long you have had your mark or how unique you believe it is, this is a worthwhile insurance against future depreciation of your brand value by allowing a potentially conflicting mark to be registered. Proceedings to remove a mark from the register once it has been granted registration are much more complex, time consuming and, inevitably, costly than raising an opposition to a mark at the appropriate stage.