From 1 October 2007 the United Kingdom Intellectual Property Office (UK-IPO) will no longer refuse trade mark applications at examination stage because of earlier conflicting trade marks. As part of the new procedure the UK-IPO will notify the applicant if there are any prior trade marks that the new trade mark may be confused with. The applicant will then have two months to respond to the report and elect if they want their application to proceed to publication. If the applicant does not respond in this time it will be assumed that they do want their application to be published.

At the same time that the new trade mark application is published, the UK-IPO will notify the owners of the earlier trade marks that they may oppose the new trade mark. The earlier trade mark owners will have three months from the new trade mark’s date of publication to lodge their formal opposition to the registration of the new trade mark.

If no opposition is received then the trade mark will be registered. Otherwise the applicant has three months to decide whether to file a defence against the opposition. If they choose to do so, then the Registrar may issue a preliminary indication of the likely success or failure of the opposition. Although the primary indication is not binding, it will be taken as being the outcome if the unsuccessful party accepts it. Otherwise if the preliminary indication is rejected then the parties have three months to file further evidence to support their case which will be heard by a Hearing Officer. If the opposition is successful the applicant may have to pay costs, while if it is unsuccessful the opposing party will have to pay costs. The amounts that will be awarded are based on a published scale of costs and are "awarded as a contribution to the other side's expenses, not as compensation and not as a penalty".

It will be possible to appeal the decision of the Hearing Officer to the independent judicial authority known as The Appointed Person, or to the High Court.

Sources and further information

UK-IPO Press Release - Changes to the examination process on relative grounds

UK-IPO Fact Sheet - Changes to Examination

UK-IPO Fact Sheet - Changes to Opposition