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Changes to UK Trade Mark Opposition Proceedings

Changes to UK Trade Mark Opposition Proceedings


Trade Mark law and procedure as defined by the Trade Marks Act 1994 and the 1994 Rules has undergone a variety of changes since the Act and the Ruleswere introduced. The most recent of which represent changes to the Act brought about by The Trade Marks (Proof of Use, etc.) Regulations 2004; and to the Rules brought about by the Trade Mark (amendment) Rules 2004 both of which came into effect on 5th May 2004.

The main procedural change relates to the opposition procedure and the new provisions introduce:

- A Statement of use. Where the opposition is based on an earlier registered mark the opposition must include a statement that the earlier registered mark has been used within the 5 year period ending on the date of publication of the application opposed or that there are goods reasons to excuse non-use.

- A consolidated counterstatement and extended period for filing. Form TM8 required for defending an opposition is now to incorporate the counterstatement. The time for filing this consolidated document can be extended for up to 12 months from the opposition being served if the parties so request. However, the extension can be terminated at any time by the Opponent.

- A preliminary indication. If the opposition is based entirely or partly on an earlier mark covering the same or similar goods, the Registrar will provide the parties with a preliminary indication of whether this basis for the opposition is likely to be successful. Unless the unsuccessful party files a Notice to Proceed, its application/opposition may be deemed withdrawn.

- New provisions for the filing of evidence. If a Notice of Intention to proceed has been filed, the evidence rounds will commence. The opponent has a period of 3 months in which to file any evidence in support of the grounds of opposition, including evidence in support of its statement of use. If no evidence is filed, the opponent will be deemed to have withdrawn his opposition unless the Registrar otherwise directs. If not withdrawn, the applicant has 3 months within which to file evidence in support of the application following which the opponent has a further 3 months to file evidence strictly in reply. All evidence must be accompanied by a new form (Form TM54) and be sent to all parties to the opposition. These periods can be extended.

- Also, revocation and Invalidation proceedings have been updated,together with the provisions relating to the filing of evidence therein.The requirement on an applicant for invalidation to show use of an earlier mark on which and invalidation action is based reflects the corresponding requirement in opposition proceedings noted above. Additionally, evidence filed must be presented with the new Form TM54.