Consultation On Relative Grounds

In February, the Trade Marks Registry published a consultation paper on how it should deal with relative grounds for refusal under s.5 of the Trade Marks Act 1994. Members of the profession and the public were given an opportunity to respond to the consultation in May. The Registry has now published its response to the comments it received.

While many people believe that the current UK system creates a stronger, more valid registration than a Community Trade Mark, most agree that it does not work effectively alongside the CTM system. There is a heavy burden on SMEs trying to register UK trade marks in view of the number of CTM marks being cited on examination, particularly CTMs with broad specifications.

Various options were put forward by the Registry:

1. maintenance of the status quo;

2. the Registry to search and cite earlier trade marks;

3. the Registry to search and cite earlier trade marks and notify the applicant. The owners of earlier registrations would be required to submit proof of use where cited marks have been registered for more than five years;

4. the Registry to search and notify the applicant only; or

5. the Registry to search and notify the applicant and earlier owners.

Option 4 was the Registry’s preferred option but, in the light of the responses from the profession, it has decided to go forward with option 5.

The Registry will publish more information on option 5. It will also introduce legislative and administrative changes which will involve further consultation on the procedural rules. These will include procedures for notifying the applicant of any marks identified in the search, how long the applicant will have to withdraw or restrict his application and the circumstances in which owners of earlier trade marks will be notified of later conflicting marks. The new regime will probably come into force in October 2007.

This article is intended merely to highlight issues and not to be comprehensive, nor to provide legal advice. Should you have any questions on issues reported here or on other areas of law, please contact one of your regular contacts at Linklaters.