IMPORTANT CHANGES TO EXAMINATION OF UK TRADE MARK APPLICATIONS On the 1st October 2007, The UK Trade Marks Registry (now known as the UK Intellectual Property Office, or UK-IPO) is adopting a new examination procedure that will transfer the responsibility for objecting to Applications that conflict with earlier pending or registered rights to the owners of those rights. After the 1st October 2007 the UK Trade Mark Registry will no longer refuse to register a new trade mark application because of an earlier conflicting trade mark (this is known as relative grounds for refusal). Owners of earlier marks are still open to oppose the new application after it has been published. The new system will be similar to the approach currently taken at the Community Trade Marks (CTM) Office. The new procedure The Registry will continue to carry out a search of the relevant registers (UK, CTM, and International Marks designating the UK) as part of the examination process and the applicant will still be notified of any earlier conflicting marks. The applicant then has the opportunity to withdraw the application, or to restrict the list of goods and services in order to avoid the apparent conflict. Alternatively, the applicant can instruct the UK-IPO to simply allow the application to continue to publication. If the application continues to publication with outstanding conflicting rights, the Registry will automatically write to the owners of any UK conflicting marks notifying them of the publication of the application in the Trade Marks Journal. Owners of earlier conflicting CTM Registrations need to "opt-in" to this new system in order to be notified. This can be done by filing an opt-in request and paying the appropriate fee at the UK-IPO. What does this mean for prior rights owners? Owners of earlier Marks can no longer rely on the UK-IPO to refuse subsequent applications of conflicting Marks. It will now be up to the owners to police their own marks and file oppositions to conflicting applications. What does this mean for owners of Registered UK Trade Marks? Owners of prior UK registered marks will automatically receive notifications of any new conflicting UK trade mark applications. It is then up to the owner of the prior right to decide whether to oppose registration of that Mark. What does this mean for owners of Registered Community Trade Marks? Owners of prior CTM Registrations will not automatically receive notifications of new conflicting UK trade mark applications. Positive steps must be taken in order to be notified of such applications. The simplest way to do this is to “opt-in” to the new UK Registry system in order to receive notifications. We can arrange this for you at a cost of £100.00 + VAT per mark for a period of 3 years. However, a broader watching service may provide better value for money. What about the Community Trade Mark system? The Community Trade Mark System remains unchanged. The CTM Office does not carry out an Examination on Relative Grounds. A search for conflicting prior rights on the CTM Register is carried out. Owners of earlier CTM Registrations are then notified of conflicting CTM applications. Again, it is then up to the prior rights owners to file oppositions to the registration of the conflicting CTM applications. What does this mean for owners of Registered UK Trade Marks? The UK Register is not searched by the CTM Office, and UK prior rights owners are not automatically made aware of conflicting CTM applications. Owners of UK Registrations should really set up a watching service in order to be notified about conflicting CTM applications. Watching Services We can set up watches of the CTM Register, UK Register and International Registers tailored to your individual trade mark portfolio. Please contact us if you would like to discuss this further.