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Amendments to Trademark Laws

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Okt 01, 2013 (Newsletter Issue 14/13)
United Kingdom
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New Fast-Track TM Opposition Procedure


The Trade Mark Rules 2008 has been amended to provide for an additional fast track opposition procedure under the Trade Mark Act 1994. The new procedure is available from October 1, 2013.

The main points of the new fast-track opposition are as follows:
- The opposition is based solely on relative grounds under sections 5(1) and/or 5(2) of the Trade Marks Act 1994, namely that the opponent owns an earlier trade mark application or registration protecting a trade mark that is either identical or similar to the applied for mark and, except in cases of double identity, there exists a likelihood of confusion between the marks. The fast track procedure will not be available in cases where the opponent seeks to rely upon alternative grounds. The number of earlier marks which can be relied upon in a fast-track opposition is limited to three UK or Community marks.
- Where a fast-track opposition is based on a trade mark registration that was more than 5 years old at the date of publication of the application under opposition, proof of use of the earlier registered mark must be filed with the Opposition. Where the requirements of a fast-track opposition in this regard are not met but the requirements of a conventional opposition are, the registrar shall have discretion to treat a fast-track opposition as a conventional opposition.
- Leave must be obtained to file any evidence other than the Proof of Use submitted with the opposition.
-The official fee for the filing of a fast track opposition is £100. The official fee for a conventional opposition is reduced to £100 from October 1, 2013, provided that the opposition is based only on sections 5(1) or 5(2) of the Act.
- Provision will be made for an oral hearing where requested by either party and deemed appropriate by the Hearing Officer, or where initiated by a Hearing Officer. Hearings may be conducted by telephone rather than in person.

It is expected that the fast track opposition proceedings lasts approx. 6 months in contrast to the 12-18 month duration of standard opposition proceedings.

For more information, please check The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 and The Trade Marks (International Registration) (Amendment No. 2) Order 2013

Source: Dehns Patent and Trade Mark Attorneys, UK;
www.ipo.gov.uk and www.legislation.gov.uk