Back at the beginning of May we looked at a consultation that was running at the UKIPO which sought the views of users and potential users of the UK national trade mark registration system about the introduction of a lower cost “fast track” opposition based on earlier registered or pending marks (see original post here). The consultation closed on 17 May 2013 and the Government’s response was released recently. In this post we take a quick look at the consultation again and the Government’s response.

As previously discussed in the earlier IPcopy post, the consultation suggested a number of ways in which a fast track opposition process may differ from the existing procedures, 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 was discussed in the original consultation document but IPcopy flagged a few issues (as highlighted by our trade mark team) with the proposals:

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

b)      It was felt that 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)      It was also felt that limiting the number of marks that could be relied upon might potentially mean it would 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.

Government response

The response document lists a number of conclusions from the consultation as follows:

• Based on the respondents’ comments there was found to be support for a less costly and more time efficient procedure;
• The fee for fast track opposition is to be set at £100;
• The fast track will be introduced for cases with grounds limited to s5(1) and s5(2);
• The number of marks that can be relied upon in fast track will be set at three (not two as proposed in the consultation document);
• Where necessary, opponents will need to provide proof of use of their earlier marks at the time of opposition. A limit on the volume of evidence that can be filed will be put in place. Registrar shall have discretion to treat a fast track case as a conventional case where the requirements of the fast track procedure are not met but the requirements of the conventional opposition are met;
• Leave must be obtained to file evidence (other than the evidence proof of use filed with the opposition);
• There will be a provision for an oral hearing to take place though this may be via a telephone call rather than in person;
• An appeal fee broadly in line with that of the High Court (£250) will be introduced. The response highlighted the number of appeals that were dismissed in the year ending 31 March 2013 (73%), the fact that a significant number of appeals were dropped prior to the decision and the number of appeals that appeared to have little merit as justification for the appeal fee. The Rules won’t require the fee to be refundable but it will be recoverable.

Secondary legislation will be required to bring the proposals in to the Trade Mark Rules 2008 and amendments to the Rules will be via a Statutory Instrument.

Mark Richardson   1 August 2013