Relative grounds for refusal - the way forward
The UK Trade Marks Registry has published an analysis of responses to the consultation paper it published in Febrary on how it should deal with the relative grounds for refusal contained in Section 5 of the Trade Marks Act 1994. The responses are summarised in a document, available in PDF and Microsoft Word format, together with the Registry's conclusions as to what it plans to do next.Says the Registry:
"It was extremely helpful that when we came to analyse the responses, a large number of respondents gave specific and quite detailed reasons for the preferences they expressed. We must therefore thank all of the users who engaged in the process for contributing to a thought provoking debate that has been invaluable when reaching such an important decision on the future of the UK trade mark registration system".The IPKat can tell you right now that the Registry favours Option 5:
"The decision to oppose the registration would be placed solely in the hands of the owners of earlier intellectual property [but] ... we should inform the owners of any earlier trade marks (if their mark is identified in an official search of a new application) in addition to the applicant (Option 5) ...The IPKat thinks the Registry has handled this delicate issue pretty well. You can't please everyone all of the time, but this proposal brings UK practice more closely into line with that of OHIM for Community trade marks and, by keeping the relevant parties informed, will make it easier for them to iron out their differences face to face ("If they're lucky", adds Merpel).
Left: The Trade Mark Registry likes to cultivate its image as a listening agency ...
In relation to Option 5, the primary argument centred on the inherent benefit of ensuring that the owners of earlier trade marks are exposed in some way to the prospective registration of a potentially conflicting mark. This would have the result that potential objections to the registration and use of new marks would more likely to surface at an early stage rather than later (by which time significant investment may have been made in the new mark by its owner). The Registry notifying the owners of earlier marks would ensure this third party exposure to proposed new registrations which otherwise may not take place due to the lack of take-up of commercial watching services. The other primary argument centred on minimising the burden on the owners of earlier marks who, without the Registry notifying them as per Option 5, would move straight from a position of official policing and enforcement of their trade marks (at least against later national applications if not Community applicants) to a position where they would have to pay for a commercial watch in order to monitor for later conflicting applications".
Click here for previous IPKat blog on consultation paper