The UK Patent Office wishes to establish whether the law should continue to require the registrar of trade marks to examine new applications in order to identify any conflict with earlier trade marks in different ownership and, if so, to refuse registration of the later trade mark.
This is usually called examination on 'relative' grounds in order to distinguish it from the separate examination of applications that is intended to prevent marks from being registered which are inherently unsuitable to be the subject of an exclusive trade mark property right: the so-called absolute grounds for refusal.
The 2001 Consultation
The Patent Office consulted interested parties on the same subject in 2001. The earlier consultation sought to establish whether there was a consensus for changing the law in this respect by means of an order under the Regulatory Reform Act. Users were divided at the time as to whether trade mark applications should still be examined by officials on relative grounds or whether such matters should only be capable of being raised in opposition or invalidation actions. A majority took the position that there should be no immediate change to the system of official examination on relative grounds before 2006.
One of the factors identified was the potentially prohibitive cost of the alternative means of enforcing earlier trade marks: opposition proceedings, particularly to small and medium businesses (SMEs). The earlier consultation showed strong support (81%) for simplifying opposition procedures with 84% of respondents indicating that the UK registry should introduce a system whereby the right to oppose an application on the basis of an earlier mark is subject to proof of use of that earlier mark.
Ministers concluded that there should be no change to the system of examination on relative grounds at that time, but that changes should be made to streamline and reduce the cost of using the opposition system.
The Changes Since Then
Changes have subsequently been made to the opposition system. In particular, the right to oppose a trade mark has (for marks over 5 years old) been made conditional upon the opponent being able to show use of the earlier trade mark. The opposition rate was already falling and these changes have helped to further reduce the number of oppositions filed. Although the number of new applications has remained fairly stable the number of oppositions has dropped from 1312 in 2001 to 801 in 2004.
Further, where opposition is filed, 46% of cases based on allegedly conflicting earlier trade marks are now settled by a quick preliminary indication from the registrar as to the likely outcome of the matter, which removes the need for either side to file evidence at the Office. For the remainder, most are settled by negotiations between the parties. Only 150-200 cases per year proceed to the point where the registrar has to make a substantive decision on the opposition. And one in every three of those cases are now decided without the need for (or cost of) an oral hearing.
Why is a Further Consultation Necessary?
The outcome of the earlier consultation has resulted in continuing uncertainty as to the future form of the UK system for examining trade marks. 72% of those who expressed a view in 2001 believed that the matter should be reviewed again at a later date. The proposed further consultation is intended to end this uncertainty by allowing an informed decision to be taken as to the form that the national registration system should take for the foreseeable future.
Why have a Pre-Consultation?
The Office is conducting a pre-consultation exercise in order to establish whether its perception of the strengths and shortcomings of the current system is widely shared by users of the system. It is our intention to identify those features of the current system which are most valuable to users and those features which are causing the most difficulty. The results of the pre-consultation exercise will be used to produce options to put before users in a subsequent formal consultation document.
When will the Consultation Proper begin?
The plan is to issue a consultation document early in 2006. This will be the subject of an extensive consultation exercise.
UK Patent Office has launched a 