JMBM IP Update: UK Trademark Registry moves away from “Full Relative Rights Examination”

The United Kingdom Trade Marks Registry has indicated that, in October 2007, in examining applications, it will no longer object to applications on the basis of prior rights. From October forward, the “full relative rights examination system” will be abandoned and it will be solely up to the prior rights owners to oppose applications when they are published for opposition. The proposed new system resembles the advisory search system operated by the European Community Trade Marks Office, wherein applicants are advised of possible conflicting prior applications or registrations and it is up to them to decide whether to proceed with the application. Further, prior rights owners will not automatically be notified of later-filed conflicting applications without opting into the notification system for a fee, and it will fall to them to decide whether to oppose such applications when published.

The Registry further indicated that under the new system, trademark oppositions may only be filed by owners of earlier applications or registrations. Whereas “any person” will be able to oppose application on the grounds of lack of distinctiveness, bad faith, etc., only prior rights owners will be able to pursue oppositions, under the rationale that prior rights owners, not the Registry, can properly assess whether a conflicting application poses a commercial threat.” According to the Registry, the restrictions on who may oppose will also avoid vexatious “tactical” oppositions by competitors who do not directly own rights in identical or similar marks.

The Registry has indicated that, although the new system will go into effect in October 2007, it will apply to all earlier-filed applications that have not been accepted as of the effective date.

As countries like the UK pursue harmonization with the Community Trade Marks system and refrain from actively objecting to applications based on prior third-party rights, it is increasingly important for trademark owners to implement watching services to remain apprised of conflicting third-party applications. Please contact us to discuss setting up international watch services for your company’s valuable trademarks.

For more information, contact Rod Berman at 310.201.3517 or RBerman@jmbm.com.