Fast Track UK Trademark Oppositions

My 40 UK Oppositions OUT

The UK IPO are running a fast consultation on revising (again) the UK trademark opposition procedure.

I did a little survey of my files. If you can't measure it in UK IP policy, it doesn't exist so we must provide evidence even if its only a measured anecdotal sample. So this is what I can say about UK oppositions over the last several years. I have dealt roughly with twice as many outgoing ones as incoming ones 40:19 and the number I have let go to a decision by the UK IPO is tiny at 5 and only one of those went to an appeal. In OHIM the ratio was 65:49

The parties involved are not all SMEs by any means but a reasonable proportion are and whatever the size of the client it generally makes sense in the UK to settle because going the whole way is costly, slow and not that much fun.

My 19 UK Oppositions IN

How does your experience compare?

This doesn't tell us much about the trademark owners who didn't do anything so its always good to review.

Some Registry ideas are

• Lower fee
• Proof of Use with TM7
• Relative Grounds only
• TM8 retained
• Separate arguments stage in writing
• No hearing
• An Appeal Fee to keep appeals down

OHIM can be made to produce fast cheap decisions using a file it and leave it approach using only CTM grounds. My strategy as an applicant is one observation only and you can even forego that with a reasonable prospect of success in some cases.

There is one little diamond lurking in this consultation that I hope will survive and that's the Appeal Fee. £800 would be about right. 

My first reaction is that the fast track opposition won't work and just makes life more complicated, but is it worth getting together to have a discussion about it?

Trade Mark Filings Halted by official stimuli

The OHIM fee reduction sounded at first like a great sales pitch to raise business - until you realise that there is no implementation date and no idea of transitional provisions. What do I say to prospective applicants? Surely the ethical advice is to wait until your client can save.

Now the UK IPO has joined the band wagon but their fee reductions have a prospective implementation date 1 October 2009 - the need for consultation precludes taking the other change opportunity of 1 April 2009 - who is the fool here? - practitioners who insist on consultation.

This FT article suggests a price war between the offices but it seems that we are the ones to lose out. While businesses planning re-brands and product launches must continue to protect their trade marks, filing is generally a discretionary spend in the small and medium sector. Best to wait then.

Lets hope the drafters of the OHIM regulation can give us some guidance on policy soon. Perhaps announcing that the registration fee for marks filed since the announcement would be abolished. That would mean that filing now would be cheaper. Go on Europe - give us a stimulus.