Ready, Steady… Oppose – Fast Track Oppositions in the United Kingdom
Wednesday 9th October 2013
One of the hallmarks of trade mark opposition proceedings can be the often drawn out process. While not generally advisable, an opposition may be filed on minimal information for commercial reasons, claiming broad grounds of objection which are fine-tuned as the evidence is developed and the case or negotiations towards settlement progress.
Naturally, as time passes, costs and correspondence increases for both sides. Many months may pass before the opposition progresses to a hearing. This extent of time may be necessary in a complicated case, but where opposition grounds may be clearly based and easily supported by evidence, the delay can be frustrating.
In the United Kingdom it is now possible to file a “fast track” opposition, based on relative rights, for lower Government fees - with the intention to speed up the process and benefit businesses in general by avoiding timely and expensive proceedings in less complex oppositions. The Intellectual Property Office has prepared a form to assist clear presentation of the necessary information to file a fast track opposition:
- The fast track opposition must be commenced on the basis of an earlier registered trade mark right.
- No more than three earlier trade mark registrations should be submitted to support the opposition – these can be United Kingdom registrations or European Union Community Trade Mark registrations.
- If any or all of these earlier trade marks may be vulnerable to removal for non-use, the Office requires that a statement of use with supporting evidence of the earlier trade mark is provided with the opposition application.
- The Opponent must identify if the earlier trade marks are identical or similar and the basis for concluding likelihood of confusion.
After filing, the parties can enter into a cooling off period for negotiations. If no cooling off period is entered into, the owner of the opposed trade mark has two months to file a Notice of Defence including evidence. If either party wishes to file further evidence, it must seek leave to so do within 14 days of the Notice of Defence.
The matter is proposed to be decided on the papers rather than an oral Hearing except where it is requested or considered necessary by the Registry, either when the evidence is complete, or in the absence of the Notice of Defence.
Following a decision, an unsuccessful party can appeal the decision, but the appeal will be heard by an appointed, independent, senior intellectual property lawyer – avoiding the cost and delay in proceeding through the Courts.
The fast track opposition should reduce costs to parties who have a good, straight forward, basis for opposition, for example based on earlier registered rights. It may also avoid some of the time and costs associated with traditional opposition proceedings and appeals through the Courts. Conversely, parties have significantly less time and opportunity to prepare and file evidence after the opposition is lodged. Looming tight opposition time frames should encourage more focussed negotiations with other parties during examination.
If you have a business interest in the United Kingdom, this opportunity underlines the importance of holding good, strong, and comprehensive, rights under registered trade marks either in the United Kingdom or via the Community Trade Mark system including the United Kingdom.
Talk to your Baldwins Advisor if you have actual, or potential, business in the United Kingdom.