Draft Relative Grounds Order published

Right: one piece of prior art the IPKat doesn't want to see being cited against him

Here's some news of a bit of proposed secondary trade mark legislation for the United Kingdom: following last year's consultations, the government has published the draft Trade Marks (Relative Grounds) Order 2007. This order, which is intended to come into force on 1 October 2007, provides as follows:

"Citation and commencement

1. This Order may be cited as the Trade Marks (Relative Grounds) Order 2007 and shall come into force on 1st October 2007.

Refusing to register a mark on a ground mentioned in section 5 of the Trade Marks Act 1994

2. The registrar shall not refuse to register a trade mark on a ground mentioned in section 5 of the Trade Marks Act 1994 (relative grounds for refusal) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark or other earlier right.

3. Section 37(2) of the Trade Marks Act 1994 (search of earlier trade marks) shall cease to have effect.

4. The registrar may, in connection with an examination under section 37(1) of the Trade Marks Act 1994, carry out a search of earlier trade marks for the purpose of notifying the applicant and other persons about the existence of earlier trade marks that might be relevant to the proposed registration.

5.—(1) Only the persons specified in paragraph (2) may make an application for a declaration of invalidity on the grounds in section 47(2) of the Trade Marks Act 1994 (relative grounds).

(2) Those persons are—
(a) in the case of an application on the ground in section 47(2)(a) of that Act, the proprietor or a licensee of the earlier trade mark or, in the case of an earlier collective mark or certification mark, the proprietor or an authorised user of such collective mark or certification mark; and
(b) in the case of an application on the ground in section 47(2)(b) of that Act, the proprietor of the earlier right.

(3) So much of section 47(3) of that Act as provides that any person may make an application for a declaration of invalidity shall have effect subject to this article.

Transitional provisions

6.—(1) Articles 2 to 4 shall not apply to an application for registration of a trade mark which was published before the coming into force of this Order.

(2) Article 5 shall not apply to an application for a declaration of invalidity which relates to a trade mark the application for the registration of which was published before the coming into force of this Order".

What the IPKat wants to know is how the examiners are going to handle "pipeline" applications: is the registry likely to bust a gut in digging up prior registered marks in order to put obstacles before an applicant who, if he were to delay his filing, might get an easier route to grant?

Explanatory memorandum here (this is ten pages long, addressing policy background, regulatory impact, environmental footprint, political correctness, cosmic significance etc etc)