Journal Article

From watchdog to sneak: the UK's new trade mark notification regime

Edward Smith

in Journal of Intellectual Property Law & Practice

Volume 2, issue 9, pages 623-625
Published in print September 2007 | ISSN: 1747-1532
Published online August 2007 | e-ISSN: 1747-1540 | DOI: http://dx.doi.org/10.1093/jiplp/jpm136
From watchdog to sneak: the UK's new trade mark notification regime

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Legal context

This article discusses the move from ex officio refusal of trade mark applications based on relative grounds, to a notification regime. The order making power for this derives from Section 8 of the Trade Marks Act 1994.

Owners of qualifying earlier registered rights, in respect of which registration of the subject application would be considered to lead to a likelihood of confusion, will be notified of the later subject application, and must decide for themselves whether to oppose.

Key points

The article examines the justification for such a shift, in terms of the need for a proper evidence and submission based evaluation of the respective marks, as well as the need to take all market factors into account in any evaluation. It also addresses the legal and cultural shift entailed in such a change. Finally, the article attempts to set out three objective measures by which an evaluation of success could be measured.

Practical significance

The change will affect all those who already have, or will have, registered trade mark rights in the UK. The author's concern in particular is for those who will be receiving notification letters and what their response might be - given that many will be unrepresented. The author also believes that more notifications will be sent out than marks that are currently ‘cited’.

Keywords: The UK is moving from a regime in which trade mark examiners police applications on behalf of earlier rights owners to one in which they will merely provide notification that an application may conflict with an earlier right on one of the relative grounds for refusal of registration.; This shift, which brings British practice into line with that for Community trade marks, has been both praised for streamlining the application process and criticized for diminishing the degree of protection enjoyed by many smaller trade mark owners that do not engage watch services.; In this article, the shift in office practice is considered not merely from the point of view of interested commercial players but also in the light of the need for examiners to act with accuracy, confidence, and consistency when implementing the new regime.

Journal Article.  1651 words. 

Subjects: Arbitration ; Intellectual Property Law

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