The UK Government plans to introduce a new fast-track opposition procedure in October 2013, which will complement and run alongside the conventional opposition procedure already in place. The new
The UK Government plans to introduce a new fast-track opposition procedure in October 2013, which will complement and run alongside the conventional opposition procedure already in place. The new system is aimed primarily at addressing concerns of small and medium sized business (collectively SMEs). In its Response Document to a consultation on the issue, the Government concluded that many SMEs considered the current procedure to be costly and inefficient, leading to a desire for a streamlined process that would better suit this sector's needs.
Under the new system, opponents will have the opportunity to challenge trade mark applications under sections 5(1) and 5(2) of the Trade Marks Act 1994. That means that the procedure will apply not only to double identity cases but also where there is a likelihood of confusion. It is the UK-IPO's view that "oppositions against similar marks based on similar goods and services are not generally dependent on factual evidence" and are therefore suitable for the fast track procedure (page 7, Response Document).
In order to streamline the process, opponent's will be required to provide proof of use of an earlier mark (where necessary) at the time of filing the opposition. Importantly, parties will be required to obtain leave to file any additional evidence other than proof of use filed with the opposition. Hearing Officer's will exercise their discretion when determining whether parties should be permitted to file evidence and it is anticipated that a Practice Direction on this point will be issued shortly.
The number of earlier trade marks that may be used as the basis of opposition will be limited to three. It was stated that it is "extremely rare for the Tribunal's Hearing Officers to need to decide upon more than two earlier marks in an opposition based on (sections 5(1) or 5(2))" (page 8, Response Document). Furthermore, it was considered that SMEs rarely have large trade mark registration portfolios and so it is considered appropriate in the circumstances to limit the number of registrations on which oppositions can be based. Fast track decisions will normally be made on the papers; oral hearings will be not be required in most cases but there will be provision for them where a Hearing Officer considers it appropriate.
The official cost of filing a fast track opposition will be £100. However, it is not the cost savings in official fees that are likely to appeal to many trade mark rights holders and particularly SMEs. Instead, higher costs are usually incurred in preparing evidence and attending hearings in support of opposition proceedings. Under the new process, there will be less scope for costs to escalate, with the Office able to "...move straight from the parties' pleadings and arguments to a decision" (page 9, Response Document). In some cases, this will significantly reduce the overall cost of opposition proceedings. In order to eliminate the filing fee as a factor in decisions about which type of opposition proceedings to choose, there will also be a reduction in the fee for a conventional opposition to £100 where it is based solely on sections 5(1) and/or 5(2), with an option to add further grounds for an additional fee of £100. Finally, the fee for appealing a decision is set at £250, which is non-refundable but may be recoverable in any cost assessment.
It is possible that under the new procedures, potential opponents will consider more carefully whether it is really necessary to base an opposition on multiple grounds where there is a reasonably strong case under sections 5(1) and/or 5(2). In doing so, trade mark owners may find that cost savings can be made. However, in many cases trade mark owners will prefer to ensure that they are putting forward the strongest case possible, which will often include basing an opposition on grounds not included in the fast track process. In those cases, it will be necessary to adhere to the conventional opposition procedures, foregoing potential costs savings, but perhaps ultimately improving the chances of success.
Under the new system, opponents will have the opportunity to challenge trade mark applications under sections 5(1) and 5(2) of the Trade Marks Act 1994. That means that the procedure will apply not only to double identity cases but also where there is a likelihood of confusion. It is the UK-IPO's view that "oppositions against similar marks based on similar goods and services are not generally dependent on factual evidence" and are therefore suitable for the fast track procedure (page 7, Response Document).
In order to streamline the process, opponent's will be required to provide proof of use of an earlier mark (where necessary) at the time of filing the opposition. Importantly, parties will be required to obtain leave to file any additional evidence other than proof of use filed with the opposition. Hearing Officer's will exercise their discretion when determining whether parties should be permitted to file evidence and it is anticipated that a Practice Direction on this point will be issued shortly.
The number of earlier trade marks that may be used as the basis of opposition will be limited to three. It was stated that it is "extremely rare for the Tribunal's Hearing Officers to need to decide upon more than two earlier marks in an opposition based on (sections 5(1) or 5(2))" (page 8, Response Document). Furthermore, it was considered that SMEs rarely have large trade mark registration portfolios and so it is considered appropriate in the circumstances to limit the number of registrations on which oppositions can be based. Fast track decisions will normally be made on the papers; oral hearings will be not be required in most cases but there will be provision for them where a Hearing Officer considers it appropriate.
The official cost of filing a fast track opposition will be £100. However, it is not the cost savings in official fees that are likely to appeal to many trade mark rights holders and particularly SMEs. Instead, higher costs are usually incurred in preparing evidence and attending hearings in support of opposition proceedings. Under the new process, there will be less scope for costs to escalate, with the Office able to "...move straight from the parties' pleadings and arguments to a decision" (page 9, Response Document). In some cases, this will significantly reduce the overall cost of opposition proceedings. In order to eliminate the filing fee as a factor in decisions about which type of opposition proceedings to choose, there will also be a reduction in the fee for a conventional opposition to £100 where it is based solely on sections 5(1) and/or 5(2), with an option to add further grounds for an additional fee of £100. Finally, the fee for appealing a decision is set at £250, which is non-refundable but may be recoverable in any cost assessment.
It is possible that under the new procedures, potential opponents will consider more carefully whether it is really necessary to base an opposition on multiple grounds where there is a reasonably strong case under sections 5(1) and/or 5(2). In doing so, trade mark owners may find that cost savings can be made. However, in many cases trade mark owners will prefer to ensure that they are putting forward the strongest case possible, which will often include basing an opposition on grounds not included in the fast track process. In those cases, it will be necessary to adhere to the conventional opposition procedures, foregoing potential costs savings, but perhaps ultimately improving the chances of success.