New trade mark rules have come into force in the UK, reports Walker Morris trade mark lawyers.
On 6 April 2008, the Trade Marks and Trade Marks (Fees) (Amendment) Rules 2008 came into force. The Rules will enable new trade mark applications to be fast-tracked to examination by the UK Intellectual Property Office (UKIPO). The examination of a trade mark ensures that the mark is in compliance with current trade mark legislation, it will deal with any absolute grounds objection and will alert the applicant to any earlier marks that are similar to the one it has submitted.
How it works
The fast-track application system has been available online on the UKIPO website from Monday 7 April 2008. For the applicant to qualify for the fast-track system:
- the application must be submitted electronically
- the application fees must be paid electronically at the time the application is submitted
- the application must be for a single trade mark, not for a series of marks.
A qualifying application will then be fast-tracked whereby the application will be examined and an examination report returned to the applicant within 10 business days from the date of filing.
A fast-track application will be subject to the usual three-month opposition period. However, the UKIPO will aim to deal with all other correspondence and procedural matters on an expedited basis.
The new system will not be open in respect of applications filed before 6 April 2008, even if the mark in question has not yet been examined.
Applicants wanting to use the fast-track system will have to pay an additional £300 on top of the standard fee (of £200). If the examination report is not returned to the applicant within the specified time-frame then the fast-track fee will be refunded, but not the standard fee.
Benefits of fast-track
The fast-track system aims to provide the same quality of service offered by the standard application process but it greatly reduces the time taken to examine an application. In comparison to the standard application, the fast-track system will get an examination report of the trade mark back to the applicant within 10 business days, whereas the standard system takes at least one month before examination of a mark. Whereas standard applications are examined in the order they are received and are susceptible to delay caused by incorrect filing or non payment of fees, this will not arise with the fast-track system, particularly since payment must accompany submission of the application.
The new system will be of particular benefit to brand owners who need an examination report quickly, such as when an owner is instituting infringement proceedings or when registration is needed before launching a new brand.
Katy Cullen and Robert Cumming are trade mark lawyers at law firm Walker Morris