In a recent post we looked at a consultation from the UKIPO which was proposing superfast patent processing. That’s not the only consultation that is running at the UKIPO and there is a further one entitled “Fast Track Opposition Procedure. Trade Mark Tribunal”. This consultation is running until 17 May 2013 and seeks the views of users and potential users of the UK national registration system about the introduction of a lower cost “fast track” opposition based on earlier registered or pending marks.

As noted in the consultation a fast track opposition process may differ from the existing procedures in a number of ways, namely:

1. Lower opposition fee
2. Grounds limited to s.5(1)/5(2)
3. Limit to the number of earlier marks that can be relied upon
4. If over 5 years old, proof of use to be filed with the notice of opposition using a pro-forma statement with exhibits
5. Leave required for either party to file any further evidence
6. Decisions normally from the papers
7. Introduction of refundable appeal fee large enough to discourage frivolous appeals

The full reasoning behind the above proposals can be found in the consultation document but a few issues with the proposals, as highlighted by our trade mark team, are noted below:

a)      The opposition fee is currently only £200 so there seems little benefit in lowering it further, even given the reasons in the consultation document;

b)      Limiting an opposition to s.5(1)/5(2) grounds only could be bad news as being able to rely on reputation is very important for trade mark owners who have reputation.

c)      Limiting the number of marks that can be relied upon potentially means that it might not be possible to put your best case forward;

d)     A mandatory requirement for evidence of use of marks that are more than 5 years old would make it a lot more expensive for the owners of those marks to enforce their rights in opposition.

The general feeling within Keltie is that the UK opposition procedure is currently well run. Delays within the system depend on the parties applying for cooling off periods or extensions of time rather than any inbuilt delays within the process. The UKIPO has, however, become quite strict on repeated extensions and the cooling off period is entered into by the parties of their own will, i.e. the delay is their decision. Without such extensions/cooling off periods the UKIPO comes to decisions in a reasonable time to give the case a fair hearing.

Mark Richardson   2 May 2013