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New Procedure for
Opposing UK Trade Mark Applications
as from 5 May
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In an attempt to streamline
UK opposition procedures, the UK government has brought
into force its reforms under the Trade Marks (Amendment)
Rules 2004 and The Trade Marks (Proof of Use, etc) Regulations
2004. These should make oppositions, especially those
based on registrations which are less than five years
old, easier, quicker and cheaper.
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It applies to all oppositions filed
from
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Oppositions based on marks which have
been on the register for five years as of the date
the opposed mark is published will need to contain
at the time the opposition
is filed a "statement
of truth" that there has been genuine
use of the marks in the UK (or the EU if the mark
is a CTM) during those five years, and this statement
must identify the goods
and services for which use is claimed
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If exact information regarding use is
not available at the time the opposition deadline
arises, the statement of truth can be drafted loosely,
but the Patent Office will require the exact information
within the first few weeks after the opposition is
filed
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Proof of that use will not need to
be filed until such time as a) the applicant calls
for it and b) the opposition has reached the evidence
stage
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Before the evidence stage, the parties
have up to a year's worth
of "cooling off " time within which
to attempt a settlement
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Once the cooling off period is terminated,
the Registry will issue its preliminary
indication on whether it considers that the
case for refusing the opposed mark based on earlier
registrations and applications is made out. Parties
cannot influence this decision; no arguments can be
filed. There is no provision to dispense with the
preliminary indication; the Registry will issue it
even if the parties do not want it.
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Preliminary indications are only issued
when the opposition is based on rights in a registration
or application for a mark. There is no preliminary
indication if the opposition is based on other grounds,
such as unregistered trade marks protected under the
law of passing off, copyright, or bad faith or that
the mark is not distinctive.
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Transitional Provisions for Ongoing
Oppositions
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These are
subject to the new proof of use requirements
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But the new longer cooling off period
and the preliminary indication will apply to all ongoing
oppositions if the applicant files his counter statement
after 5 May.
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Miscellaneous Notes
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| The law remains that opponents
(unlike the CTM opposition procedure) do not need to
be the owner of the marks on which the opposition is
based. |
| Rules on discovery are unamended:
discovery will be ordered only when justification for
it has been made out. |
| May 2004 |
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