Changes to the UK Trade Mark Application System
In 2007 the way in which trade mark applications are examined by the UK Trade Marks Registry will change significantly.
The Registry will cease to examine applications on "relative grounds" and will no longer refuse to register a trade mark on the basis that it has identified a conflicting right. This change will bring the UK application system in line with the Community application system.
Under the new system, the Registry will continue to conduct a search of the relevant registers, forwarding the results to the Applicant. Upon receipt of the search results the Applicant may become aware of a potential conflict and decide to withdraw the application. If the Applicant elects to continue, the Registry will take no further action to obstruct the progress of the application, but will provide the Proprietors of the earlier marks identified by the search with details of the new application. Therefore under the new system, it will become the responsibility of the Proprietors of earlier marks to "police" the register to ensure that new registrations do not infringe their rights.
The new system should ensure more accurate assessments of the likelihood of confusion' based upon evidence presented by the parties during the opposition procedure, thereby reflecting the actual position in the marketplace. Furthermore the registration of trade marks will no longer be hindered by invalid trade mark registrations.
However a heavy burden will be placed upon trade mark Proprietors who will need to use the Opposition system to prevent the registration of conflicting trade marks, as opposed to relying upon the Registry's examination procedure.
The Registry aims to introduce the new system in October 2007, although the required legislation is still in preparation.