Partner Article

Trade Mark Rules 2008

With Watson Burton LLP Law Firm

Due to the success and popularity of the Community trade marks (CTM) system it was believed that the popularity of UK trade mark registrations was subsiding. However, recent changes may see trade mark owners favouring a UK registration or at least pursuing one in conjunction with a CTM.

The new Trade Mark Rules 2008 came into force on 1 October 2008, and replace the Trade Mark Rules 2000. The new rules introduce substantive changes and in general terms should result in a faster, cheaper and more efficient trade mark system.

The new rules will apply to all UK trade mark applications filed after 1 October 2008 and in addition will apply to existing applications when a step is taken in relation to that application after that date.

Currently, a straightforward unopposed application takes approximately 4 to 6 months from filing to registration, including a 3 month period during which the mark applied for is subject to opposition by third parties. The new rules introduce a 2 month opposition period to allow straightforward unopposed applications to proceed to registration within 3 to 4 months. This period can be shorted again by the request for a “fast track examination”.

If a cooling off period is agreed between the parties, the parties are currently given 12 months within which to negotiate. Rule 18 of the new rules provides for a cooling off period of 9 months initially, with an option to extend the period to 18 months if both parties consent and file a statement confirming that they are conducting negotiations. This allows the parties a more flexible time frame in which to resolve the matter.

The rules also give formal case management powers to the UKIPO. The registrar may give such directions as to the management of any proceedings as he or she thinks fit, including setting the timetable for filing evidence and giving directions as to the issues on which evidence is required and the way it is to be presented.

The substantive changes to the rules are likely to be received positively. They make the trade mark system more flexible but do so without increasing the application fee. Problems may arise however, for non UK parties as instructions are often more difficult to obtain and as such practitioners will need to obtain instructions more quickly to satisfy the new time limits.

Despite this, however, as the UK system is now more efficient, trade mark owners should consider utilising both UK and CTM applications.

If you have any comments or questions about this article or any Intellectual Property matters, please contact Jill Dalkin of Watson Burton LLP at jill.dalkin@watsonburton.com.

This was posted in Bdaily's Members' News section by Ruth Mitchell .