Subscription to a watch service will be essential for the UK as from the 1 October 2007 for anyone whose only protection for his trade mark in the UK is by way of a Community Trade Mark Registration
As from this date, the UK Trade Marks Registry will continue to conduct its own search for conflicting marks as part of the examination of a UK application and will continue to send the results of its search to the applicant (or the representative for the applicant, if the applicant has a representative); but the Registry will no longer have the power to object in its own right to the application on the basis of any of the marks found in its search, no matter how close.
The only way therefore after 1 October 2007 that an application can be stopped from going through to registration because it is in conflict with another mark is if the owner of that mark opposes the application. And the period during which opposition can be filed at the Registry runs for only three months – no longer – calculated from the time the application is published in the Registry’s own Journal.
It is essential therefore that owners of marks make sure that they will get notification of applications which are potentially in conflict with their marks as and when those applications are published, so that they have a chance to consider if an opposition is necessary in time to make the deadline for filing that opposition.
The Registry has announced that it will send notifications only for marks found in its search which are on the UK register(which includes UK designations of International Registrations obtained under the Madrid Protocol system); these will be generated by the Registry’s own computer and be sent out direct to the owner of the mark (or his representative if he has one).
The UK Registry has decided not to send notifications to owners of CTMs which were found in its search. Why is there is a distinction between UK marks and CTMs? The Registry’s justification for this distinction is that the owners of UK marks have already paid the Registry to look out for their interests, in that the fees they paid to the Registry for registration of their own marks means that that the Registry think it is obliged to give them notice. Owners of CTMs have on the other hand paid nothing to the UK Registry and the UK Registry therefore takes the view that it has no obligation to notify owners of CTMs.
So, what action is needed as a result of this change of law on 1 October 2007 to make sure that owners get notification?
- For owners of marks who already subscribe to a watching service via a private agency for the UK (examples of private agencies being TMDS or Compu Mark): nothing, since you will get notification from the watching service in the same way that you do now
- For owners of UK registrations who do not subscribe to a watching service: action is not essential, since the Registry should notify you automatically, either directly or via me if I am down as the address for service of your marks at the Registry;
- For owners of CTM registrations who do not yet have any watching service in place: action is essential. And the options are either a) to take out a watch service with a private agency or b) to subscribe to the watch service which the Registry itself is setting up for CTMS. My recommendation to all clients would be a) since the Registry’s fee for its watch service is not that much less than a private agency and moreover the agency will send you reminders to renew the watch, whilst the Registry will not. If you fall into this third category, please call me for more information and advice.