The UK Intellectual Property Office has published a consultation paper seeking views on proposed changes to the Trade Mark Rules 2008. It is concerned that two of the procedures currently provided for by the Trade Mark Rules are no longer in tune with the needs of business.
This is mainly due to the fact that the procedures, which have been available for some time, have had a fairly limited uptake. Bearing in mind that the Intellectual Property Office is in the process of upgrading its information technology infrastructure, it would be possible to obtain cost savings whilst doing so if the facility to carry out these procedures does not have to be built-in. It is hoped that the responses to the consultation paper will aid the Intellectual Property Office in deciding whether or not to remove these facilities.
The first facility is for owners of Community Trade Marks and International trademarks with Europe designated as their home country to receive notification of any later trademarks filed for registration in the United Kingdom that could potentially conflict with their prior rights. It would then be possible for the owner to file an opposition against the registration of the later trademark. A fee of £50 is payable to receive these notifications for a period of three years. In 2009, just over 1000 trademark owners opted-in to this service.
The second is the procedure whereby two or more trademark applications or registrations may be merged together into a single application or registration, provided that the conditions of doing so were met. This is something most useful to a brand owner with several trademark registrations and applications outstanding in respect of the same brand. It means that, for example, a trademark could be registered across several classes in a single application. A significant period of time has elapsed since this mechanism was last used, which suggests that those wishing to take advantage of it have already done so.
The deadline for responses to the consultation paper expires on 1st June 2010. Click here to visit the consultation website where you will find more details on the consultation itself and how to respond.